Journal of Research and Development in Comparative Law

Journal of Research and Development in Comparative Law

A Comparative Study of the Importance of Using Evidence of Acquired Distinctiveness of Trademarks with a View to the Practice of the Courts of the United States and the European Union

Document Type : scientific research paper

Authors
Zahra Shakeri 1
Maryam Mehrbanpoorazar 2
1 Associate Professor of Intellectual Property Law, Private and Islamic law Department, Faculty of Law and Political Science, University of Tehran, Tehran, Iran
2 MA Graduate of Intellectual Property Law, Private and Islamic Law Department, Faculty of Law and Political Science, University of Tehran and Judge, Tehran, Iran
10.22034/law.2025.2061292.1652
Abstract
Distinctiveness is the most important characteristic of a trademark, which is divided into two types: inherent and acquired.
Acquired distinctiveness is a distinction often made with respect to descriptive marks that do not have inherent distinctiveness and are therefore not protectable. However, over time, based on continuous and unique use of the mark in the marketplace, advertising, and the like, are perceived by consumers as an indication of the source of goods and services.
An important issue that has received less attention is how to use evidence of secondary meaning, an issue that, if not taken seriously, can cause irreparable damage to manufacturers and trademark owners, even famous ones, who have invested in this field.
In addition, failure to protect these trademarks will lead to unfair competition and consumer confusion.
This research, using an analytical-descriptive method and a case-based approach, examines how acquired distinctiveness of trademarks is established in the Iranian, the United States and European legal systems, and finally concludes that even assuming no amendments to the provisions of the law, this distinctiveness can be protected in our country.
Although there are signs of its acceptance, this acceptance requires production of sufficient legal literature and greater familiarity among the target community, namely judges, lawyers, registry office experts and professionals.
In the meantime, evidence such as consumer research surveys, sales volume, digital data, presence in different environments, advertising campaigns, marketing costs and financial investments can play an important and fundamental role in proving acquired distinctiveness.
Therefore, acquired distinctiveness is a serious component in supporting non-traditional and descriptive signs, and its success will depend on documentary and accurate evidence and a flexible approach by legal systems.
Keywords
acquired distinctiveness, secondary meaning, Nestle, Adidas, Louboutin, Open AI

Subjects

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