Descriptiveness and Stylisation in Spain: Article 5(1)(c) of Ley 17/2001

Spain’s trade mark law takes a strict approach to descriptive marks. Under Article 5(1)(c) of Ley 17/2001 (the Trade Mark Act), signs that consist exclusively of indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, time of production, or other characteristics of the goods or services cannot be registered as trade marks. The OEPM applies this prohibition rigorously, and applicants who attempt to register descriptive word marks — or descriptive words dressed up with minor graphical tweaks — frequently find their applications refused.

The Legal Framework: Article 5 Absolute Prohibitions

Article 5 of the Trade Mark Act sets out the absolute grounds for refusal, which the OEPM examines ex officio for every application. The descriptiveness prohibition under Article 5(1)(c) operates alongside related grounds:

• Article 5(1)(b): Signs devoid of distinctive character.
• Article 5(1)(c): Signs consisting exclusively of descriptive indications (kind, quality, quantity, purpose, value, geographical origin, time of production, or other characteristics).
• Article 5(1)(d): Signs that have become customary in current language or trade practices (“generic terms”).

These grounds are distinct but frequently overlap. A descriptive sign is typically also devoid of distinctive character, and a term that was once descriptive may over time become the generic designation for a product category.

What “Descriptive” Means Under Spanish Practice

The OEPM assesses descriptiveness from the perspective of the average Spanish consumer, who is considered reasonably well-informed, observant, and circumspect. A mark is descriptive under Article 5(1)(c) when it directly and immediately informs the consumer about a characteristic of the goods or services, without requiring any mental effort or interpretation.

The assessment considers the mark in relation to the specific goods or services applied for. A word that is descriptive for one category may be perfectly distinctive for another. The OEPM also considers foreign-language terms: if the average Spanish consumer would understand an English, French, or other foreign-language word as descriptive of the goods, the mark will be refused. Common English terms used in Spanish commerce — such as “FRESH,” “NATURAL,” “CLEAN,” or “SMART” — are frequently refused for the goods they describe.

The Strict Standard for Word Marks

The OEPM applies a particularly strict standard to pure word marks (marcas denominativas) that are descriptive. A word mark protects the word itself, regardless of any particular visual presentation. This means the prohibition under Article 5(1)(c) applies with full force: if the word is descriptive, the mark is refused, regardless of how the applicant might intend to use it visually.

Combinations of descriptive words are generally treated as descriptive unless the combination creates a new, non-obvious meaning that the consumer would not immediately recognise as describing the goods. Simply joining two descriptive terms (“FAST+CLEAN” for cleaning services) typically does not overcome the objection.

Why Minor Graphical Tweaks Fail

A common strategy by applicants is to add minor graphical elements to a descriptive word and file the mark as a figurative or mixed mark (marca mixta), hoping that the visual component will provide the distinctiveness that the word element lacks. The OEPM and Spanish courts have consistently rejected this approach when the graphical elements are minimal, commonplace, or merely decorative.

This strict position is consistent with the EU Common Practice on the examination of figurative marks containing descriptive or non-distinctive word elements, developed by the European Trade Mark and Design Network (TMDN), of which the OEPM is a participant. Under this Common Practice:

• A figurative mark containing a descriptive word is registrable only if the figurative elements are sufficiently distinctive on their own to impart distinctive character to the mark as a whole.
• Simple geometric shapes, standard typefaces, common colour combinations, basic borders, and ordinary ornamental flourishes are not sufficient to overcome the descriptiveness of the word element.
• The more dominant the descriptive word element is within the overall sign, the greater the distinctive character required from the figurative elements to save the mark.

In practice, this means that adding a plain circle, a standard font treatment, a simple colour background, or a basic underline to a descriptive word will not overcome the Article 5(1)(c) refusal. The figurative element must independently capture the consumer’s attention and function as a badge of origin on its own terms.

Generic vs. Descriptive: The Critical Distinction

As in most systems, Spanish law distinguishes between:

• Generic terms (Article 5(1)(d)): The common name for the product or service itself. These cannot be registered under any circumstances and cannot be rescued through acquired distinctiveness.
• Descriptive marks (Article 5(1)(c)): Terms that describe a characteristic of the product but are not the product’s name. These can potentially be saved through acquired distinctiveness (discussed in a separate article).

The distinction matters because it determines whether the mark can ever be registered, regardless of evidence of use.

The Procedure for Responding to a Descriptiveness Refusal

When the OEPM issues a provisional refusal citing Article 5(1)(c), the applicant receives notification and has one month to respond. The response may include:

• Arguments that the mark is not descriptive: Demonstrating that the term is suggestive rather than directly descriptive, or that the combination of elements creates a non-obvious meaning.
• Evidence of acquired distinctiveness: Proving that the mark has gained recognition as a brand through extensive use in Spain (discussed in detail in a separate article).
• Amendment of the application: Converting a word mark into a figurative mark with sufficiently distinctive graphical elements, narrowing the goods specification, or other modifications.

If the OEPM upholds the refusal, the applicant may appeal to the OEPM’s Board of Appeal (recurso de alzada). Further appeal lies to the specialised commercial sections of the Provincial Courts of Appeal (Audiencias Provinciales), which since January 2023 have jurisdiction over appeals against all OEPM decisions.

Strategic Recommendations

• Choose inherently distinctive marks: Invented words, arbitrary terms, and suggestive marks avoid the descriptiveness issue entirely and provide the broadest scope of protection.
• Do not rely on minor stylisation: If the word element is descriptive, adding a generic font, colour, or simple shape will not save the mark. The figurative elements must be genuinely distinctive.
• Test in Spanish: Assess your mark from the perspective of the average Spanish consumer. Foreign-language terms commonly understood in Spain will be treated as descriptive.
• Consider the EUIPO as an alternative or complement: Because the OEPM and EUIPO apply the same standards for absolute grounds, a mark refused by one is likely to be refused by the other. However, the level of consumer understanding may differ between a Spanish-only public and the broader EU public.
• Build evidence of use before filing: If a descriptive mark is commercially important, begin accumulating evidence of use and consumer recognition in Spain before filing. This supports a potential acquired distinctiveness argument.

Common Mistakes

• Filing a descriptive word mark and hoping for the best: The OEPM examines absolute grounds ex officio. A clearly descriptive word mark will be refused.
• Adding a font or colour and expecting registration: The OEPM consistently holds that minimal graphical elements do not overcome the descriptiveness of the word.
• Assuming foreign-language terms are safe: English terms widely understood in Spain (“NATURAL,” “EXPRESS,” “PREMIUM”) are frequently refused as descriptive.
• Combining two descriptive words: Unless the combination produces a genuinely new and non-obvious meaning, it remains descriptive.
• Confusing suggestive with descriptive: A mark is suggestive if it requires a mental leap to connect the word to the goods. It is descriptive if the connection is immediate. The line is often debatable, and the OEPM tends to draw it strictly.

Key Takeaway

Spain’s approach to descriptive marks under Article 5(1)(c) is strict and consistent with EU practice. The OEPM examines absolute grounds ex officio and will refuse descriptive word marks without hesitation. Minor graphical embellishments do not rescue a fundamentally descriptive sign — the figurative elements must be independently distinctive. Applicants who invest in inherently distinctive marks avoid this battle entirely. Those committed to descriptive branding must be prepared to demonstrate acquired distinctiveness through substantial evidence of use in the Spanish market.