Nomina sunt consequentia rerum: of descriptive trademarks and secondary meaning

This study takes its initiative from a recent judgement by the General Court of the European Union to discuss some issues concerning descriptive trademarks and the relevant scope of protection in European Union law, especially with regard to the so-called secondary meaning. In particular it is argued that a descriptive trademark, although it may acquire a secondary meaning and even reputation, should not prohibit competitor third players from using the necessary denotative expression not only in a purely descriptive way, but also genuinely as a trademark (rectius: as part of a valid complex trademark). In fact, if it were otherwise, trademark rights would create an excessive and unjustified monopoly on the descriptive term, going beyond the rationale underlying the exceptional protection granted to such an acquired distinctiveness. Actually, it seems preferable that even descriptive trademarks validated by secondary meaning face the same limits of protection provided by European Union legal norms and case-law for any trademark in general.