Article 7 (1) letter. c) of the Community Trademark Regulation, like Article 13 of the Italian Industrial Property Code, states that are not to be registered:
«trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service»
The aim of the law is to prevent anyone from gaining the exclusive right to use terms that could be used also by others to designate the kind or quality or other characteristics of a product. The rule provides that the prohibition applies when the mark is composed “exclusively” by such a term, implying that when the term is used in addition to other expressions or a graphic it can be validly registered as a trademark.
The interpretation of the rule is not always easy. Recently, the Court of First Instance in Case T-426/11 ruled that the prohibition applies whenever the mark is composed of a term which in one of its meanings indicates a characteristic of a product or a service provided that there is an immediate connection of said term in said quality.
In the present case the Court has denied the registrability as a trademark of the term “Méditation Transcendentale” for education, care and human services because this expression could qualify a feature of the service offered.
“Méditation Transcendentale” could probably be a brand for shoes but not a brand for care services or entertainment that could be based on meditation.