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I am co-founder of a company with which we want to apply for a trademark of our name in BeNeLux. We were told that this would be quite dangerous for us and would be risky as our company name also describes the activity of our company. Such trademark applications would be denied by the European Union.

I can give you an example. If a company is called "computerrepair" and their service is about repairing computers, a trademark request of the name "computerrepair" would be denied as the company name which describes the company's activity.

My question is if this is true and how much value is placed on this?

(I've searched a bit through the internet but haven't found an exact answer).

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    If the law works as common sense would hope, that seems reasonable to me. If a competitor of yours offers the same service they would still be allowed to desribe it is as such, so you don't actually get any protection. What is your trademark supposed to achieve if anyone who repairs computers can describe this as "computerrepair". – quarague Apr 7 at 8:58
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    Note that this is true even if it's not the name of the company. You can't register a trademark for something that is purely descriptive, in the corresponding field (classes). Imagine if you could trademark "computerrepair", that would mean no one providing computer repair services could use those words. – jcaron Apr 7 at 22:30
  • Even ignoring the common sense argument, there's also the trademark dilution argument. Trademarks die if they enter the common lexicon to describe your service. So even if such trademarks were legal, they would become invalid immediately after being approved. – Brian Apr 8 at 20:26
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Yes, that's true

Common words are not trademarkable, as is a descriptive phrase, because a trademark needs to be distinctive. As the Netherland Trademark Office tells you, your mark can't fit in any of these categories:

  • literal - Your tradename or logo must not literal describe or depict your goods or services.
  • promotion - The trademark must amount to more than a value judgment alone.
  • misleading

They even have an FAQ about that!

The trademark is descriptive - which is the most common reason. A trademark is descriptive when it describes the properties of the product or service or promotes these. For example: the words 'super fast bike' for the product category 'bicycles'.

Please note: the wording here is not always in common usage. The trademark 'medi' is not listed in the dictionary as a common abbreviation for 'medical'. All the same, it is a common designation that consumers will understand right away in the discriptive sense. So, this type of trademark could also be descriptive and hence declined.

Computerrepair is a literal description of what the business does, just like Biomild on a mild biological yogurt just describes it.

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  • What if it's descriptive, but not in the way people would first think of it. E.g. I have a patented process for analyzing people's fingernails and producing individually customized polish that bonds to their specific nail tissue, including transparent non-gloss versions for those that don't want to be seen wearing nail polish. Could I not trademark my product as "ComputerRepair" brand Nail Treatment? – Ray Butterworth Apr 10 at 12:26
  • @RayButterworth that's misleading just like "Beef-Stuff" on a product made from Pork. – Trish Apr 10 at 12:42

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