Applicants for EU trademarks at the EUIPO often encounter a refusal to grant the right due to the existence of absolute obstacles to registration. The basis for refusal is most often Article 7 points 1 b and 1 c of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trademark (hereinafter: the Regulation), i.e. the indication that (i) the trademark is devoid of any distinctive character (Article 7 point 1 b of the Regulation) and/or (ii) the trademark consists exclusively of signs or indications that may serve in trade to designate the type, quality, quantity, intended purpose, value, geographical origin or time of production of goods or provision of services, or other characteristics of goods or services. In the case of the first of these grounds, we are talking about the lack of the so-called distinctive character of the trademark. In the second, about descriptive trademarks.
Trademarks devoid of distinctive character .
In order to assess the distinctive character of any trade mark, whatever its type, it is required that it is capable of distinguishing the goods in question from those of a specific undertaking and, therefore, from those of other undertakings (21/10/2004, C-64/02 P, Das Prinzip der Bequemlichkeit, EU:C:2004:645, § 33).
The signs referred to in Article 7(1)(b) of the Regulation are, in particular, signs which do not enable the relevant public to make the same choice, if the experience was positive, when next purchasing the goods or services in question, or a different choice, if it was negative (see 27/02/2002, T-79/00, Lite, EU:T:2002:42, § 26 and 27/02/2002, T-34/00, Eurocool, EU:T:2002:41, § 37). This is the case in particular where the signs are commonly used in connection with the marketing of the goods or services in question (15/09/2005, T-320/03, Live richly, EU:T:2005:325, § 65).
Marks devoid of distinctive character cannot therefore fulfil the basic function of a trademark, i.e. the identification function, understood as the ability to provide the recipient with information about the origin of the product.
According to settled case-law, the distinctive character of a trade mark must be assessed by taking into account, first, the goods or services covered by the application and, second, the perception of the relevant public, which is the average consumer of those goods or services who is reasonably well-informed and reasonably observant and circumspect (29/04/2004, C-473/01 P & C-474/01 P, Tabs, EU:C:2004:260, § 33; 08/05/2008, C-304/06 P, Eurohypo, EU:C:2008:261, § 67; and 21/01/2010, C-398/08 P, Vorsprung durch Technik, EU:C:2010:29, § 34).
Descriptive trademarks .
Refusal of registration of an EU trade mark on the basis of its descriptive character is justified where, from the point of view of the target public, there is a direct and specific link between the term applied for and the goods or services covered by it (see 27/02/2002, T-106/00, Streamserve, EU:T:2002:43, § 44, and 30/11/2004, T-173/03, Nurseryroom, EU:T:2004:347, § 20). Therefore, the sign falls within the prohibition laid down in Article 7(1)(a) of the Regulation. (c) EUTMR, if it has a sufficiently direct and actual link with the goods or services in question to enable the relevant public to recognise immediately and without further thought a description of those goods or services or their characteristics (see 22/06/2005, T-19/04, Paperlab, EU:T:2005:247, § 25).
In order for a sign to be considered descriptive, it is sufficient that one of its possible meanings is descriptive in relation to the goods and services covered by the application. It is not necessary for that purpose that the sign was actually used in a descriptive sense at the time of filing. It is sufficient, as is clear from the wording of the provision in question, that such signs or indications may be used for such purposes. Accordingly, registration of a mark must be refused under that provision if at least one of its possible meanings indicates a characteristic of the goods or services in question (23/10/2003, C-191/01 P, Doublemint, EU:C:2003:579, § 32).
The case law of the Board of Appeal of the EUIPO has developed a number of common rules concerning both obstacles to registration. In both cases, the goods or services for which the application was filed must be taken into account, as well as the level of attention of the relevant public. A higher level of attention of the relevant public does not mean that it entails a more liberal interpretation of the absolute grounds for refusal of registration. On the contrary, sometimes professional education and experience allow the public to understand the content of the mark more easily (11/10/2011, T-87/10, Pipeline, EU:T:2011:582, § 28). According to Article 7(2) of the Regulation, the provisions of Article 7(1) of the Regulation apply regardless of the fact that the grounds for refusal of registration apply only to part of the European Union. Therefore, for a domestic right to be granted, it is sufficient for the trade mark in question to be descriptive or devoid of distinctive character only in one country. If a given word constituting the trade mark has a meaning in a given language (e.g. English), the assessment of the character of the mark must be made from the point of view of English-speaking consumers in the European Union.
Moreover, the scope of application of the grounds for refusal of registration set out in Article 7(1)(b) to (d) of the Regulation overlaps. In fact, a sign which is limited to describing the characteristics of goods and services is at the same time devoid of distinctive character in relation to those same goods or services within the meaning of Article 7(1)(b), since it cannot therefore fulfil the essential function of a trade mark, namely the function of identifying the commercial origin of the goods or services (see judgment of 12/06/2007 T-190/05 ‘TWIST & POUR’, paragraph 39).
Earlier registrations of similar marks in national systems or at the EUIPO .
In the event of a refusal to register, applicants very often appeal to the Board of Appeal, indicating that the trademark is not devoid of distinctiveness or is not descriptive. Among the arguments supporting the appeal, applicants also raise the fact that the mark that is the subject of the application (or its element) has previously been registered by another national patent office or even the EUIPO for identical or similar goods or services. The appellants thus demand the maintenance of consistency in the EUIPO case law. It seems that this issue raises great doubts among entities interested in obtaining trademark rights.
In this respect, the justifications of decisions of the Board of Appeal of the European Union Intellectual Property Office most often indicate that the European Union trademark system is an autonomous system, independent of any national system. In connection with the above, the Office is not bound by decisions taken by the Member States on the registration of signs (cf. 30/04/2003, T-707/13 & T-709/13, BE HAPPY, EU:T:2015:252, § 63 and the case-law cited therein). In the case-law practice of the Boards of Appeal of the EUIPO, it is also often indicated that there is no data on whether the decision on the earlier registration was taken in the first instance or as a result of an appellate review or whether secondary distinctive character was examined. Without knowing the premises which the national office followed in admitting the sign to registration, the EUIPO cannot refer to that decision;
In turn, the fact that the Office (EUIPO) has registered other marks containing a given word is not, in the opinion of the Board of Appeal, an argument in favour of registering the sign in question. Although the Office strives to issue consistent decisions, it sometimes happens that descriptive marks or marks devoid of distinctive character are registered. Despite this – as indicated by the Board of Appeal – the principle of legality cannot be breached in the name of satisfying the expectations that the applicant may have had in connection with the registration of a comparable sign (Decision of the First Board of Appeal of 29 January 2020 in case R 2079/2019-1).
Among other arguments, the following justification is very common:
– previous registrations constitute a circumstance that should be taken into account, but it should not be considered as decisive. The argument concerning the registrability of other trade marks may be relevant where the examples of registration cited contain a statement of reasons that undermines the assessment made by the Office (12/02/2009, C-39/08 & C-43/08, Volks.Handy, EU:C:2009:91; 15/09/2005, C-37/03 P, BioID, EU:C:2005:547, § 47, 51; 06/03/2007, T-230/05, Golf USA, EU:T:2007:76, § 57-64; 06/07/2011, T-258/09, Betwin, EU:T:2011:329, § 76-84; 27/02/2015, T-106/14, Greenworld, ECLI:EU:T:2015:123, §36);
– all examples cited by the applicant concern the registration of the mark in the first instance and do not contain a statement of reasons. It should be emphasised that the Boards of Appeal cannot be bound by the decisions of the Office in the first instance regarding the rejection or registration of the mark, because it is the Boards that are obliged to assess the legality of these decisions. The decisions cited were not the subject of the proceedings before the Boards of Appeal, and therefore the Boards did not have the opportunity to review their legality and validity (see Decision of the First Board of Appeal of 12 February 2020, in case R 1742/2019-1).
As can be seen in the proceedings before the Board of Appeal of the EUIPO, it is worth relying additionally on earlier similar trademark registrations in cases where the applicant has a justification for such decisions that undermines the authority’s position in a given case and when these are earlier decisions of the Board of Appeal.
The lack of consistency in EUIPO case law in the above-mentioned area results from the fact that the European Union Intellectual Property Office has significantly changed its practice in the interpretation of the concept of descriptiveness or lack of distinctiveness of a trademark. Currently, these criteria are much stricter and it is difficult to obtain registrations for the above-mentioned signs, despite the fact that the registers contain a number of descriptive trademarks registered before the change in practice. On the other hand, in order to unify the rules of procedure, the EUIPO, in agreement with individual national trademark registration offices, has started cooperation to adopt a common practice in relation to trademarks.
