Throw in the towel: How many letters make a mark ‘new’?

The line between protecting a distinctive brand and claiming ownership over a traditional product can be thinner than a single letter. The case involving Tunisian fouta towels raises questions about cultural heritage, geographical indications and whether trademark examiners are doing enough to recognise the origins and meaning of words beyond their own borders, says Isabella Becaro Pinho.

Summer is drawing to a close in Europe, and many of us will have had the opportunity to enjoy at least one day at the beach, by the pool, or simply making the most of the long-awaited sun we so deeply missed in January. Each of these occasions may call for one particularly versatile accessory: a fouta.

A fouta is a striped, flat-woven cotton textile with hand-tied fringes. It is the traditional name given to a textile piece that has been used for centuries across the Maghreb and is particularly associated with hammams and Tunisian craftsmanship.

From the hammam to the beach, and from the table to the living room, this quick-drying, ultra-thin and compact type of towel is not only colourful and beautiful, but also highly practical, having been refined through generations of Tunisian craftsmanship.

Precisely because of its versatility, the global beach market has naturally set its sights on it. Questions of intellectual property protection therefore arise on two fronts: in Tunisia, but also beyond its borders.

And in this globalised world, who ensures that the full history carried by such an old product is recognised, particularly when it has not been formally protected as an IP asset? This article considers what happens when a traditional product travels further than the legal protection afforded to its name.

From the Tunisian hammam to a Portuguese trademark

A hammam is a traditional steam bath that has existed since ancient times, where people usually cover themselves with a fouta. But more than that, a fouta has not only historically been used for this purpose, nor does it come in only one type. In fact, there are five different types of fouta, each suited to a different purpose:

• Plain weave, for quick drying
• Different weaving in a Honeycomb format, used for beach and bath, so that the water can enter in its cells and be retained, but also released easily
• Chevron weave, for softness and spa use
• Diamond twill, for ceremonies
• Double-sided weave, for comfort and décor

Beyond all these details, Tunisian craftsmanship has a unique way, passed down through generations and carefully followed throughout all the stages involved in making a fouta.

The city of Mahdia has been associated with the flourishing of silk and cotton weaving since approximately the XVI century, forming part of this long textile tradition.

With manual work and wooden looms remaining a part of the process, the fringes along the edges of the fouta are also all tied entirely by hand.

All that being said, we can understand that this is an ancient technique, with a very special method of production, and that the fouta itself is recognised as a distinctive product, particularly in Tunisia.

However, since no specific formal protection has been granted to this product, an issue may arise from an intellectual property perspective, where companies in other countries, and even on other continents, may recognise the value and uniqueness of these products and replicate them.

FUTAH, a brand founded in 2013 and protected under European Union trademark No. 014909246 and Portuguese trademark No. 513903, is a recognised Portuguese brand, particularly known for the towels sold under it.

The brand itself states that its original towel was “inspired by traditional Arab towels” and that its founders first encountered this type of beach towel in Africa. Furthermore, according to a 2018 master’s dissertation authored by FUTAH co-founder, the towels were, at that time, “designed in Portugal and manufactured in Tunisia, with their production incorporating the know-how of Tunisian craftsmen in the handling and processing of Egyptian cotton”.

If, as expressly stated in the dissertation, the intention is to give “the brand name FUTAH to the product itself, selling “Futahs” rather than towels, just as Havaianas sells “Havaianas” rather than flip-flops”, for example, this brings a delicate legal tension into focus.

Following this reasoning, the risk is that consumers may begin to understand FUTAH as the ordinary name for this type of towel, making its connection to the traditional Tunisian fouta from which the brand drew its inspiration less apparent, bringing a problem regarding distinctiveness and genericity.

If the relevant public perceives FUTAH simply as an altered spelling of fouta, the name of the product itself, the sign may be considered generic and, for that very reason, incapable of distinguishing the products of one business from those of another.

The issue, therefore, lies in the interpretation of the target audience and the registration of a mark that is extremely close to the actual name of these specific towels, which is made in a very specific way and associated with a particular country for centuries.

FUTAH differs from FOUTA by removing one letter and adding another. How thin, then, is the line between a new trademark registered for the exact same products and the name of an ancient technique?

How many letters need to be changed for it to be considered a genuinely new and distinctive sign or, at the very least, not an appropriation of a very special practice recognised in a specific country?

When no GI exists

The truth is that, when we speak about IP rights, this is a controversial question. If the fouta were formally protected, the registration of the European trademark FUTAH might not have been possible. The examiner could have raised this point, and a third party could have challenged the registration.

However, in the present scenario, the Tunisian fouta is not yet formally protected as a geographical indication (GI) or through any specific protection for traditional knowledge. FUTAH could, nevertheless, potentially have been refused on the following grounds:

• Lack of distinctiveness: FUTAH may be perceived merely as a different spelling of fouta, rather than as the name of a particular brand.
• Generic or customary character: If fouta is the common name of this type of textile, FUTAH may be understood as an equivalent spelling of the product name itself, which should remain available for use by other traders.
• Deceptive nature: The mark could lead consumers to believe that the products come from Tunisia or follow traditional Tunisian methods when they do not.
• Bad faith: This could apply only if the mark was filed with the dishonest intention of monopolising the traditional term or preventing its legitimate use.
• Conflict with a GI: If fouta were formally protected as a GI, FUTAH could potentially be challenged as an imitation or evocation. However, this ground does not currently apply.

The Guinean Léppi, for example, a traditional cotton textile from the Fouta Djallon, a region of Guinea, demonstrates what changes once a traditional textile receives formal GI protection.

Similar spellings can then be challenged as imitation or evocation. The Tunisian fouta, by contrast, illustrates the more uncertain position of traditional products whose cultural significance has not yet been converted into a formally recognised IP right.

No safe spelling distance: How many letters are enough?

The problem is that FUTAH may easily lead consumers to associate the trademark with the fouta textile. The two terms are phonetically very similar and are used in relation to the same type of product.

The judgment of the Court of Justice of the European Union (CJEU) in Case C-783/19, concerning the PDO (Protected Designation of Origin), “Champagne” (a protected designation reserved for sparkling wines produced only in the Champagne region in accordance with the applicable production specifications) and the sign “CHAMPANILLO”, provides a useful comparison. The case concerned the use of CHAMPANILLO by tapas bars, together with an image of two glasses filled with a sparkling beverage being clinked together.

Although the legal context is different, since fouta is not protected as a GI, the case demonstrates that the assessment of evocation goes beyond literal identity. It may consider the visual, phonetic and conceptual similarities between the names, the relevant products or services and, ultimately, the connection created in the consumer’s mind.

Applying the CJEU’s guidance, the Provincial Court of Barcelona concluded that CHAMPANILLO evoked and therefore infringed the PDO Champagne. The case therefore demonstrates that changing or adding letters does not, by itself, create a safe legal distance from a protected name.

Adding a new layer to these observations, a related controversy arose in Portugal in 2021 concerning the traditional Camisola Poveira from Póvoa de Varzim. The US fashion brand Tory Burch marketed a sweater that closely reproduced the traditional garment, including its recognisable embroidery and symbols.

The sweater was offered for almost ten times the price of an original Camisola Poveira, and the case was widely criticised as an example of cultural appropriation and the commercial exploitation of traditional craftsmanship.

Following strong public criticism, Tory Burch apologised to the Portuguese people and acknowledged the garment’s true origin. The dispute eventually resulted in an out-of-court settlement.

The timing adds an important dimension to the case. When the controversy arose in 2021, the Camisola Poveira did not yet benefit from the formal protection it has today. The public reaction not only led to an apology and an out-of-court settlement, but also gave renewed visibility and urgency to the need to protect the garment.

It was only on September 9, 2022, that Camisola Poveira was publicly certified by the Municipality as a product with a protected GI, with the formal national registration process being completed subsequently.

This reveals a fundamental distinction between trademarks and GIs. Trademark systems are generally structured around priority and registration: subject to certain exceptions, rights are often secured by the party that acts first.

Geographical indications take us deeper. The question is not simply who claimed or registered the name first, but where the product comes from, which community developed it and which qualities, reputation and traditional know-how connect it to that place.

The absence of a GI does not erase the history of a traditional product. It simply means that this history has not yet been transformed into an enforceable collective right. The Camisola Poveira case demonstrates that this gap may eventually be closed, but it also raises an uncomfortable question: must a traditional community wait until its heritage is commercially appropriated before the need for formal protection is taken seriously?

The case demonstrates that the commercial appropriation of a traditional product may concern more than its name. Although the patterns found on a fouta may be less specific than the distinctive symbols embroidered on a Camisola Poveira, for example, its weaving styles, stripes, fringes and overall construction can still make it deeply recognisable.

A consumer may look at the product and see not merely an unusual beach towel, but specifically a fouta.

The territorial blind spot: The need for a more culturally informed examination

Sometimes, even a word used to designate a specific product may be misunderstood by consumers from other cultures, who may perceive it as a fanciful term in the international market. A word that is culturally familiar and commonly used in one territory may appear entirely invented in another. This is the territorial blind spot.

In the examination process of a trademark application, it is important to consider more than the usual legal criteria. Although the legal assessment must remain based on the perception of the relevant public in the territory concerned, a more culturally informed examination should also rigorously investigate whether the word is used in another region, what it represents there and the history it may carry.

The same approach should be adopted when conducting a thorough trademark clearance and availability search, which should consider not only earlier registered rights, but also the wider linguistic, geographical and cultural meaning that a word may carry in another country.

For example, FOUTA, and potentially FUTAH, as previously mentioned, could face refusal for towels if the relevant public understood the terms as the name of the product itself. FUTAH for a perfume brand, however, would have no direct connection with the product traditionally designated by the word (fouta) and could, therefore, function as a distinctive trademark.

A word is not generic in isolation: it is generic in relation to specific products and from the perspective of a particular public. We, therefore, need to answer two main questions. The mark is:

• Generic in relation to which products?
• Generic from whose perspective, and in which territory?

Perhaps most tellingly, publicly available trademark records currently show no application for FUTAH in Tunisia, the very country in which the fouta is culturally rooted and whose public would be most likely to recognise FUTAH not as a fanciful term, but as a modified spelling of the product itself.

This absence does not prove that an application would necessarily be refused; it may simply reflect a commercial decision.

Nevertheless, it brings the territorial blind spot into sharp focus: FUTAH may function as a distinctive brand where the word fouta is culturally unfamiliar, while appearing far less fanciful in the country from which the product, the word and the craftsmanship originate.

The legal distance between FOUTA and FUTAH may therefore be measured not only in letters, but also in the distance between the public examining the mark and the culture from which the word was taken.

Summary

In conclusion, examiners from the relevant Intellectual Property Institutes must carefully recognise that an apparently unique word may already carry an established meaning elsewhere.

The examination should therefore consider not only whether the term is protected by an existing IP right, but also whether it identifies a traditional product whose name, history and cultural significance predate the trademark application, even without a formal IP registration.

There is a fine line between creating a new trademark and appropriating what is, in fact, the name of a traditional and culturally significant product from another country or a specific region. The absence of formal GI protection does not erase that history.

Although obtaining such protection requires compliance with all the formal and substantive criteria established by the competent authority, the fouta appears to possess many of the characteristics that could support an application for GI protection, including its geographical association, reputation, traditional production methods and generations of artisanal know-how.

We must therefore be careful when determining whether a modified spelling creates a genuinely distinctive trademark or merely allows private ownership to arise around a name that has long belonged to a special cultural tradition.

Isabella Becaro Pinho is an attorney at law at Inventa and can be contacted at ibecaropinho@inventa.com