A neologism is a linguistic innovation – a new element developed in a given language, a certain form of it or – for artistic purposes – within a literary text. Innovations are introduced into the language intentionally – in order to fill certain lexical gaps – or unconsciously, e.g. by adapting exceptional word forms to the majority rule, with varying degrees of their acceptance and grounding in the language. Innovations that are established and adopted in linguistic practice take on the character of linguistic changes. [1]

A neologism as a new word that is the sum of two different words is very often the subject of trademark applications in industrial property offices. In practice, entities interested in obtaining trademark registration choose word marks resulting from the combination of elements, each of which is descriptive, i.e. indicates directly and specifically the goods and services for which it is applied for. In many cases, the procedure of combining two descriptive words is conscious and is intended to eliminate the obstacle to registration referred to in art. 129 ¹  sec. 1 points 2 and 3 of the Act of 30 June 2000 – Industrial Property Law. However, the question arises whether the simple combination of such elements is sufficient to eliminate absolute obstacles to registration? How should trademarks that are a combination of elements, each of which is descriptive of the characteristics of the goods or services for which registration is applied for, be treated, especially if this combination creates a neologism?

Although it is difficult to provide a clear answer to these questions, the case law of the Board of Appeal of the EUIPO provides some guidance in this respect.

According to the basic principle of assessing the distinctiveness of trade marks, they must be analysed as a whole. In the case of complex word marks, the overall impression given by the mark must be taken into account for the purposes of assessing whether it lacks distinctive character or has it. However, this does not prevent an initial analysis of each of the individual elements that make up the mark. An examination of each of the elements that make up the mark may prove useful for making an overall assessment. [2]

The distinctiveness of each trademark is examined taking into account the way the mark is perceived by the target public, taking into account the language in which the expression has a meaning and in relation to the goods and services indicated in the application. Refusal of registration due to the descriptive nature of the European Union trademark is justified when, from the point of view of the target public, a direct and specific link is perceived between the concept applied for registration and the goods or services covered by it.  [3]

According to the established practice of the EUIPO, in order to refuse registration of a trade mark on the basis of Article 7(1)(c) CTMR (Article 129 ¹  (1)(3) being the equivalent in the Polish Industrial Property Law), it is not necessary that the signs or indications constituting the mark referred to in that article were actually used at the time of filing the registration application in a way that describes the goods or services for which the application is filed or the characteristics of those goods or services. It is sufficient, in accordance with the wording of that provision, that such signs or indications may be used for such purposes. Therefore, on the basis of that provision, the authorities may refuse registration of the mark if at least one of its possible meanings indicates a characteristic of the goods or services in question. [4]  This applies in particular to cases where the trade mark has more than one meaning.

Applicants defending their trademarks in proceedings before the office very often argue that a word constituting a neologism or a combination of two other words does not occur in a given language, either in the dictionary or colloquial sense. In response to these allegations, the EUIPO Board of Appeal indicates that dictionaries do not always provide definitions of words resulting from the combination of two words, but rather of individual words, phrases and proverbs. It cannot therefore be expected that all possible and grammatically correct combinations of words will be found in a dictionary. Therefore, in the event of a refusal to register a mark, the Board is not obliged to prove that the word or expression is the subject of a dictionary entry. This is confirmed especially in the case of complex or highly specialized terms, because dictionaries do not contain all possible combinations of words.

Although the criteria for assessing distinctiveness are the same for all types of trade marks, in applying those criteria it may turn out that the perception of the marks by the relevant public may not be the same for each of those types and therefore it may be more difficult to demonstrate distinctiveness for some types of trade marks than for others.

One of the criteria strictly relating to trade marks created from a neologism or a word resulting from a combination of elements is the view that, in order for such a mark to be considered descriptive within the meaning of Article 7(1)(c) EUTMR, it is not enough to establish any descriptive character in relation to the individual elements. The existence of such character must also be established in relation to the neologism or the word itself. [5]  Therefore, the mere fact that each of those elements, considered separately, is devoid of distinctive character does not exclude the possibility that the combination created by them will have such character.

On the other hand, in justifying its decisions to refuse registration of a mark, the EUIPO very often indicates that the mere combination of elements, each of which is descriptive of the characteristics of the goods or services for which registration is sought, is itself descriptive of those characteristics, even if the combination creates a neologism. The mere juxtaposition of those elements, without any unusual changes, in particular as regards syntax or meaning, cannot lead to anything other than a mark consisting exclusively of signs or signs which may serve, in trade, to designate the characteristics of the goods or services in question. [6]

So when will the combination of two descriptive words result in the “creation” of a distinctive trademark?

A sign which does not appear on its own in dictionaries and encyclopaedias, a neologism, a sign resulting from the combination of elements, each of which is descriptive of the characteristics of the goods or services for which registration is sought, is itself descriptive of those goods or services within the meaning of Article 7(1)(c) CTMR, unless there is a perceptible difference between the neologism or the word and the mere sum of the elements which compose it. This means that the neologism or the word, resulting from a combination which is unusual in relation to those goods or services, creates an impression which is sufficiently far removed from that which is given by the mere set of indications contained in the elements which compose it, in such a way that it goes beyond the sum of those elements. [7]

It follows from the above that, despite the descriptive nature of the individual expressions, the trade mark applied for may, as a whole, have a distinctive character, provided that the combination of the verbal elements of which it is composed goes beyond the sum of the indications which those elements provide.

In this respect, it is also appropriate to analyse the name in question from the point of view of the relevant lexical and grammatical rules. [8]  The Office’s established practice and case law indicate that a change in spelling may give a sign a sufficiently distinctive character if it is striking, surprising, unusual, arbitrary or likely to change the meaning of the verbal element or requires an intellectual effort on the part of the consumer to connect the concept and what it may refer to.  [9]

Examples of trademarks that are neologisms and combinations of words considered descriptive and devoid of distinctive character by the EUIPO include the following trademarks:

– The “MICROJET” trademark, among others, for scientific, measuring, signaling and control devices and instruments, laboratory devices, medical, surgical, veterinary, medical and dental devices and instruments.

In the justification of the refusal decision, the EUIPO indicated that “the MICROJET sign was created by combining two English words MICRO and JET. Combining two simple words and omitting a space will not make the sign original and acquire a sufficient level of distinctiveness. In the present case, such a procedure has practically no effect on the distinctiveness of the mark. Since the combination of the word elements MICRO and JET is simple and devoid of unusual elements, especially concerning syntax or meaning, it does not introduce a new quality and does not have an unusual character, and thus does not produce in the relevant consumer an impression sufficiently different from the impression produced by the simple combination of these words to change its meaning or scope. Therefore, it cannot be said that the combination has a different character than that of each of the elements of the mark considered separately. Since none of the elements of the mark, considered separately, has a distinctive character, but is a simple and direct indication of specific features of the goods and services applied for, the mark considered as a whole is therefore descriptive and devoid of distinctive character”. [10]  The mark was registered for goods in classes 10 and 35;

– “TOPTEXTIL” trademark, among others for upholstery materials, textiles, fabrics.

In the grounds of the refusal decision of 19 January 2018 (in case R 1299/2017-5), the Board of Appeal indicated that the word “TOP” means “excellent, best” and “TEXTIL” (in English “TEXTILE”) is a textile or raw material used to produce fabrics, fibres or yarns. The relevant user will understand these words as an expression with a specific meaning: excellent, best textiles (fabrics). Contrary to the applicant’s position, there is no perceptible difference between the expression “TOPTEXTIL” and the sum of its elements, which difference could justify recognising the sign as distinctive. Certainly, the combined spelling of both words does not constitute such a difference. Procedures consisting in introducing a characteristic spelling (in particular, writing two separate words without a space) do not cause the sign so written to acquire distinctive character. [11]

– The “Zaliczkomat” trademark, among others, for computer programs.

In the grounds of the refusal decision of the Fifth Board of Appeal of the EUIPO of 28 November 2017 (in case R 1608/2017-5), it was indicated that the word sign “ZALICZKOMAT” consists of a combination of two elements, the word “zaliczka” and the suffix “mat”, the descriptive nature of which is not disputed by the Applicant. In the opinion of the Board of Appeal, “the expression “ZALICZKOMAT” will be perceived by consumers as a neologism consisting only of the sum of elements which together mean “automatic device for paying advances”. There are no elements that would create an impression on the relevant public that is sufficiently distant from the impression created by the simple combination of those elements. [12]

– The “GREENSTRAP” trademark, among others, for plastic packaging materials.

In the grounds of the refusal decision of the Fifth Board of Appeal of the EUIPO of 25 February 2020 (in case R 2029/2019-1), it was stated that the sign consists of the words “GREEN” and “STRAP”. The word “green” means “green”, but is also used as a synonym for the word “ecological”. In relation to goods and services, it designates a product that is designed, manufactured or used in an environmentally friendly manner. The word “STRAP” means “strap” (a narrow piece of leather, fabric or other material used to carry, fasten or support things). The expression “GREENSTRAP” as a whole will therefore be understood by the target public as meaning “green, ecological strap”. In relation to the goods in question (plastic packaging materials), the sign “GREENSTRAP” conveys to the public the information that these goods are in the form of straps and are environmentally friendly. It is irrelevant that the word “GREEN” may also have other meanings. According to settled case-law, for a sign to be regarded as 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, according to the wording of the provision in question, that such signs or indications may be used for such purposes. Accordingly, under that provision, registration of the mark must be refused if at least one of its possible meanings designates a characteristic of the goods or services in question (23/10/2003, C-191/01 P, Doublemint, EU:C:2003:579, § 32). In the sign ‘GREENSTRAP’ there is no perceptible difference between that sign and the sum of its parts (‘GREEN’ and ‘STRAP’) which could justify finding that the sign is distinctive. The combination of both words certainly does not constitute such a difference. Procedures involving the introduction of a characteristic spelling (in particular, the spelling of two separate words without a space) do not cause the mark thus spelled to acquire a distinctive character. [13]

The analysis of the case law of the EUIPO Board of Appeal shows that the mere combination of two descriptive words in relation to the claimed goods and services is not sufficient to obtain the right to register a trademark. In order to obtain a positive decision, such a trademark must produce an impression sufficiently far from that produced by the mere sum of its elements. This will be the case when the combination results in unusual changes, e.g. in terms of syntax or meaning from the point of view of the relevant lexical and grammatical rules. The combination of two descriptive words should introduce a new quality and have an unusual character, change its meaning or scope, so as to produce in the relevant consumer an impression sufficiently different from the impression produced by the mere combination of these words. The practice of the EUIPO and the case law indicate that a change in spelling may give a sign a distinctive character to a sufficient degree if it is striking, surprising, unusual, arbitrary or may change the meaning of the verbal element or requires the consumer to make an intellectual effort to connect the given concept and what it may refer to. [14]

Among the positive decisions of the EUIPO, the following examples can be cited:

– Trademark “SPARKFONTS” EUTM 015615958 for software, manuals [books]; printed matter; creation, care and maintenance of data processing programs;

– Trademark “AGROSERV” EUTM 013205786, among others, for agricultural machines and machine tools, vehicles, including tractors or insurance services.

In the reasoning of the decision of the Fourth Board of Appeal of the EUIPO of 22 May 2015 (in case R 54/2015-4), it was indicated that even the examiner was unable to indicate the meaning of the word “AGROSERV”. Even if the word “SERV” were to refer to the word “SERWIS”, it remains unclear what “AGROSERV” should mean. It is therefore impossible to read from the applied-for sign a “meaning” that could represent characteristics of the goods and services applied for, including in connection with agricultural services. [15]

– “Steel-O-Chain” trademark EUTM 014325311 for locks and keys.

In the reasoning of the decision of the Fourth Board of Appeal of EUIPO of 2 December 2016 (in case R 103/2016 5), it was stated that the trade mark consists of the English words ‘steel’ and ‘chain’, separated by the letter ‘O’ and two hyphens. The Board agrees with the applicant that the letter ‘O’ is not usually understood by the target public as referring to something in the shape of the letter ‘O’. Instead, the element ‘O’ may be perceived as an abbreviation, most likely of the word ‘of’. In this respect, ‘Steel O(f) Chain’, literally translated into the language of the case, would mean ‘Stahl von Kette’ (Steel from chain). However, in the Board’s view, this statement is completely meaningless. Only by changing the order of the words, i.e. from ‘steel (of) chain’ to ‘chain (of) steel’, could that expression acquire a possibly descriptive meaning in relation to the goods claimed. However, this word order inversion is another mental step that the reasonable average consumer would not make when purchasing everyday goods such as locks, keys, and key blanks. [16]

– Trademark “Fotopark” EUTM 013044383 for, among others, works of art and figurines made of paper and cardboard, architectural models, publishing and reporting services, education, entertainment and sports, translations.

The Appeal Board agreed with the Applicant’s argument that the combination of these two words is completely unusual and fanciful. In the Board’s opinion, in this case there is a noticeable difference between a neologism and the sum of its parts. This term is a fanciful concept that requires some interpretation by the relevant public in order to be understood. In connection with the goods and services applied for, it is not clear what “Fotopark” is supposed to describe. A direct description of the characteristics of the goods and services has not been proven in relation to the applied for trademark. [17]

– Trademark “TERRA TRACTOR” EUTM 011392727 for, among others, agricultural equipment, construction machines, machines for cleaning streets, squares and for maintaining lawns, as well as parts thereof; utility vehicles, in particular lifting vehicles for interchangeable working equipment and machine systems, tractors and tractors.

In the grounds of the decision of 4 November 2013 (case R 1294/2013-4) favouring the applicant, the Fourth Board of Appeal stated that the word “TERRA” has a meaning in Portuguese, so that the descriptiveness of the mark must be considered in that language. In Portuguese, the word “TRACTOR” corresponds to the German word “Traktor” [tractor], and the word “TERRA” means “Earth”. Literally translated, “TERRA TRACTOR” means “earth tractor” or “earth tractor”. As a whole, such a term does not exist in Portuguese. The specific meaning of “TERRA” in Portuguese makes no sense when combined with the word “TRACTOR”. It is a word mark which constitutes a new linguistic creation in the sense that its use as a whole by third parties has not yet been proven. In this case it is true that, from a legal point of view, merely combining two descriptive terms without introducing any unusual changes, in particular as regards syntax or meaning, does not prevent them from remaining essentially descriptive, unless the overall impression is greater than the sum of its parts (see judgment of 12 February 2004, C-265/00, ‘Biomild’, paras. 37-39 and 43). In the present case, the combination of ‘TERRA’ and ‘TRACTOR’ is unusual in its meaning and represents more than the combination of its parts. There is no ‘tractor’ with a function adapted to ‘earth/land’. The general term is not descriptive of the goods in respect of which the application was filed, nor can it be said that there are any other reasons which deny it the possibility of serving as an indication of the origin of goods from a particular undertaking.  [18]

[1]  Wikipedia definition https://pl.wikipedia.org/wiki/neologizm.

[2]  CJEU judgment of 25/10/2007, C-238/06 P, Plastikflaschenform, EU:C:2007:635, § 82.

[3]  Judgment of the General Court of 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).

[4]  Judgment of the CJEU of 23/10/2003 C 191/01 P ‘Wrigley’, paragraph 32; Judgments of 23 October 2003; OHIM v Wrigley, C-191/01 P, EU:C:2003:579, paragraph 32; of 19 May 2010, Zeta Europe v OHIM (Superleggera), T-464/08, not published, EU:T:2010:212, paragraph 28;

[5]  Judgment of the CJEU of 15 September 2005, BioID/OHIM, C-37/03 P, EU:C:2005:547, paragraph 29;

[6]  Judgment of the CJEU of 12/02/2004, C-265/00, Biomild, EU:C:2004:87, § 39.

[7]  Judgment of the General Court of 12 January 2005 in joined cases T-367/02, T-368/02 and T-369/02 ‘SnTEM’, paragraph 32);

[8]  Judgment of the General Court of 30/11/2004, T 173/03, Nurseryroom, EU:T:2004:347, § 21;

[9]  EUIPO decision of 6 August 2012, R 716/2012-4 ‘ACTIVMOTION SENSOR’;

[10] EUIPO decision of 16/02/2016;

[11]  Decision of the Board of Appeal of EUIPO of 19 January 2018, case R 1299/2017-5;

[12]  Decision of the Board of Appeal of EUIPO of 28 November 2017, case R 1608/2017-5;

[13]  Decision of the Board of Appeal of EUIPO of 25 February 2020, case R 2029/2019-1;

[14]  Decision of the Board of Appeal of the EUIPO of 6 August 2012, case R 716/2012-4;

[15]  Decision of the Board of Appeal of EUIPO of 22 May 2015, case R 54/2015-4;

[16]  Decision of the Board of Appeal of EUIPO of 2 December 2016, case R 103/2016 5;

[17]  Decision of the Board of Appeal of EUIPO of 17 July 2015, case R 239/2015-5;

[18]  Decision of the Board of Appeal of EUIPO of 4 November 2013, case R 1294/2013-4.