Do you understand what the title of this article means? Then perhaps you are a Benelux resident. In fact, the Benelux Court of Justice recently ruled in a case about a descriptive trademark that Benelux residents should basically understand German words.

How was it again? In trademark law, there is a rule that descriptive designations cannot be monopolized as trademarks. These designations must be kept free for all. For example, the word "Apple" cannot be a trademark for apples. Apple also cannot sue supermarkets and greengrocers for their use of the descriptive designation apple.

Thus, those who want to register a descriptive name as a trademark receive a refusal. So does the German company Loesdau. It intends to register the name "PFERDEFIT" as a trademark in the Benelux for various horse care products. The Benelux Office for Intellectual Property (BOIP) refuses to register the name: "PFERDEFIT" is descriptive for horse care articles.

Loesdau appeals to the Benelux Court of Justice, but is unsuccessful there as well (judgment in Dutch here). The fact that the part "PFERDE" is a German word does not mean that the Benelux resident would not understand "PFERDEFIT" as a descriptive term. After all, German is an official language in Belgium and Luxembourg. Moreover, the Benelux Court ruled that the Dutch- and French-speaking public of the Benelux interested in horse care products will also know the word "PFERDE". As a side note: this trademark application could already have been rejected because "PFERDEFIT" is descriptive for the German speakers in the Benelux.

So, do you want an original name that can also be registered as a trademark in the Benelux? Then stay away from German translations of a name that can describe the product. Unfortunately, "Apfel" is out of the question for apple farmers here.

Mathijs Peijnenburg

27 June 2023