Descriptive words, distinctive character and inventiveness in trade mark law: a critical recalibration of the Abercrombie spectrum

The extent to which descriptive words can be registered as trade marks is a controversial issue in intellectual property law. Under s 3(1)(c) of the Trade Marks Act 1994 (UK), a sign which serves to designate the quality, purpose or other characteristics of a product cannot be registered unless it has acquired prior distinctiveness through use. However, it is not clear whether the descriptiveness exclusion in s 3(1)(c) applies to suggestive word marks that only indirectly describe or allude to attributes associated with a product or its user. Through a comparative analysis, this article argues that clearer guidelines are needed in the UK to explain the interplay between the absolute grounds for refusal of registration in the examination of suggestive marks. It also considers the extent to which suggestive word marks should be treated as being ‘devoid of distinctive character’ under s 3(1)(b), as part of a broader effort to safeguard key elements of the public domain from misappropriation by individual traders.