text: Section 4 Absolute grounds for refusal

text: Section 4 Absolute grounds for refusal — Chapter 1 General principles

text: The Council of the European Union establishes the rules on the use of languages by the EU institutions, acting unanimously by means of regulations adopted in accordance with Article 342 of the Treaty on the Functioning of the European Union.

text: Sign Reasoning Case

text: The sign consists of the Russian 19/07/2017,

text: , медве́дь expression for the word ‘bear’. (fig.), EU:T:2017:527 The mark was refused for, among (EUTM 14 397 921) other goods, meat in Class 29. The relevant public includes the Russian‑speaking public in the EU, such as the inhabitants of the Baltic States, namely Estonia, Latvia and Lithuania.

text: The sign consists of the Cyrillic EUTM 16 061 004 verbal elements ‘Клубничное тоффи с соком’. These would be understood by the Russianspeaking population in the EU as ‘strawberry toffee, with juice’. The mark was refused for goods in Class 30, among others, confectionery. The features of the shape of the mark applied for, taken alone or combined with the verbal elements, were not considered to be distinctive.

text: Sign Case No

text: BigXtra 11/12/2014,

text: P, BigXtra, EU:C:2014:2445

text: The Court confirmed the refusal for goods and services in Classes 16, 35, and 41 to 43 by means of general reasoning because of a sufficiently concrete and direct link for all these goods and services. For all of them, ‘BigXtra’ will be perceived as indicating price reductions or other advantages (para. 48).

text: Sign Case No

text: PIONEERING FOR YOU 12/12/2014,

text: , Pioneering for You, EU:T:2014:1067

text: The General Court allowed general reasoning for goods and services in Classes 7, 9, 11, 37 and 42 because the promotional meaning of the sign applied for would be perceived identically for each of them (paras 36-37).

text: Sign Case No

text: Deluxe

text: Goods and services in Classes 9, 35, 37, 39 to 42 and 45 were considered to form a homogenous category, namely that all the goods, without exception, can be presented as being of superior quality, and all the services, without exception, can be presented as providing superior quality. However, objectively all these goods and services are of rather different nature (para. 35).

text: Sign Case No

text: START UP initiative (fig.) 15/12/2016,

text: , START UP INITIATIVE (fig.), EU:T:2016:747 The GC stated in relation to various business services in Classes 35, 36, 41 and 42: ‘Moreover, it should be noted that start-ups are likely to be found in a great many fields and, therefore, to need a wide range of services. This leads to the conclusion that the reasoning may be identical for different services which may be of interest to those start-ups and which may correspond to activities provided to them or by them, regardless of the fact that those services may not necessarily be homogenous. In those circumstances it was not necessary to repeat the same reasoning for each service or each category of services’.

text: Section 4 Absolute grounds for refusal — Chapter 1 General principles The Office will assess disclaimers filed before the date of entry into force of the abovementioned regulation (23/03/2016) according to the former practice applicable. As a general rule, a disclaimer will not help to overcome an absolute grounds

text: Sign Case No

text: EUTM 11 055 811 Description: The mark consists of five stripes of colour arranged horizontally and directly adjoining each other, their length being several times larger than their height. The colour distribution from the top to the bottom is: very light green, light green, medium green, dark green and very dark green. Proportion of the five colours: 20 % each.

text: Sign Case No

text: EUTM 2 346 542 03/05/2017,

text: , BLENDED SHADE OF GREEN, EU:T:2017:295

text: Colour indication: RAL 9018; NCS S 5040G5OY + RAL 9018 1 : 4; NCS S 5040G5OY + RAL 9018 2 : 3; NCS S 5040G50Y + RAL 9018 3 : 2; NCS S 504050Y + RAL 9018 4 : 1: NCS S 5040G50Y. Description: none Class 7 — Wind energy converters, and parts therefor.

text: [T]he contested mark was registered as a colour mark (§ 36). Consequently … the upright trapezoidal shape is not part of the subject matter of the protection sought and that element does not set contours to the colours, but only serves to indicate how the colours will be applied on the goods at issue. The protection sought is thus for a specific combination of colours applied on the lower section of a shaft, irrespective of the shape of that shaft, which is not part of the subject matter of the protection sought. (§ 40)

text: Sign Case No

text: EUTM 9 045 907 (This mark was applied for as ‘other’ under the Colours indicated: Red, black and grey previous regime, indicating that it was a position Description: The mark consists of the combination mark. The example is given here to show that it of the colours red, black and grey as applied to can also be filed as a colour mark (combination of the exterior surfaces of a tractor, namely red as colours), showing how the combination appears on applied to the bonnet, roof and wheel arches, the products.) light and dark grey as applied to the bonnet in a horizontal stripe and black as applied to the front bonnet grill, chassis and vertical trim — as depicted in the illustrative representation attached to the application.

text: Example of an unacceptable sound mark

text: EUTM No 143 891 R 781/1999‑4 (ROARING LION) The (alleged) sonogram was considered incomplete, as it did not contain a representation of scale of the time axis and the frequency axis (para. 28).

text: Example of acceptable sound marks

text: CP 11 ( ) Although the verbal element perceived in the sound has no meaning, the representation of the sound Invented word mark enables the competent authorities and the public to determine the clear and precise subject matter of protection. CP 11 The representation of the sound mark enables the competent authorities and the public to determine Street noises the clear and precise subject matter of protection, despite perceiving many different sounds together in the file.

text: In the framework of the European Union Intellectual Property Network, the trade mark offices of the European Union have agreed on a Common Communication on New Types of Marks: Examination of Formal Requirements and Grounds for Refusal (referred to as Common Practice 11, or CP11). They agreed on examples of representations of sound marks, motion marks and multimedia marks that can/cannot enable the competent authorities and the public to determine the clear and precise subject matter of protection.

text: Sign Case No

text: EUTM No 8 581 977 RED LIQUID FLOWING IN Description: this is a motion mark in colour. The nature of the motion is that of a trailing SEQUENCE ribbon with a liquid-like appearance (ribbon). The ribbon flows around and ultimately into OF STILLS a spherical shape (sphere). The motion takes approximately 6 seconds. The stills in the (MOVEMENT sequence are spaced approximately 0.3 seconds apart and are evenly spaced from the MARK) beginning to the end of sequence. The first still is at top left. The last still (20th) is the middle one in the bottom row. The stills follow a progression from left to right within each R 443/2010‑2 row, before moving down to the next row. The precise sequence of the stills is as follows: in the 1st still, the ribbon enters the frame in the upper edge of the frame and flows down the right edge of the frame, before flowing upward in the 2nd to 6th stills. During that phase of motion (in the 4th still) the end of the ribbon is shown, producing the effect of a trailing ribbon. In the 6th to 17th stills, the ribbon flows counterclockwise around the frame. From the 9th still onwards, the sphere appears in the centre of the frame. The interior of the sphere is the same colour as the ribbon. The ribbon flows around the sphere. In the 14th still, the ribbon enters the sphere, as if being pulled inside. In the 15th to 17th stills, the ribbon disappears inside the sphere. In the 19th and 20th stills, the sphere moves toward the viewer, gaining in size and ending the motion.

text: Sign EUTM No

text: EUTM No 5 338 629 Description: the mark is an animated sequence with two flared segments that join in the upper right portion of the mark. During the animation sequence, a geometric object moves upwards adjacent to the first segment and then downwards adjacent to the second segment, while individual chords within each segment turn from dark to light. The stippling in the mark is for shading only. The entire animated sequence lasts between 1 and 2 seconds.

text: Despite consisting of a blurred image, the representation of this motion mark enables the competent authorities and the public to determine the clear and precise subject matter of protection.

text: Although the representation of this motion mark contains non-identifiable images, it enables the competent authorities and the public to determine the clear and precise subject matter of protection.

text: Sign EUTM No

text: EUTM No 9 742 974

text: Description: The mark comprises a moving image consisting of a toothbrush moving towards a tomato, pressing onto the tomato without breaking the skin, and moving away from the tomato.

text: The Office rejected the application as it was not possible to establish the precise movement from the description provided along with the representation.

text: Sign EUTM No

text: EUTM No 16 023 09 5 Description: the mark consists of an animated sequence on a plain background, namely a door that can be opened in the following three stages: open/mid-open/closed or closed/mid-open/open, using the symbols ‘+’ and ‘-’. The length of the animation between the stages is half a second. The door and its frame are rectangular and are in the style of a basic geometric drawing with a small rectangular handle, opening onto a plain background. The symbols ‘+’ and ‘-’ are placed by each of the long edges of the frame.

text: The Office rejected the application as it was not possible to establish the precise movement from the description provided along with the graphic representation. A sign that consists of the opening and closing of a door by pushing buttons on the left or right of the latter is subject to the consumer’s personal interpretation. The sign therefore cannot fulfil the clarity and precision requirements under

text: Article 4

text: EUTMR because each consumer would interpret it in a different way and would be subjected to a different sequence of the movement mark.

text: Despite consisting of a blurred image and the fact that the verbal element perceived in the sound has no meaning, the representation of this multimedia mark enables the competent authorities and the public to determine the clear and precise subject matter of protection.

text: Sign Case No

text: , Apple Store, EU:C:2014:2070

text: Sign Case No

text: EUTM No 1 122 118

text: Mark description: Smell of ripe strawberries

text: , Odeur de fraise mûre, EU:T:2005:380, § 34

text: The Court considered that the smell of strawberries varies from one variety to another and the description ‘smell of ripe strawberries’ can refer to several varieties and therefore to several distinct smells. The description was found neither unequivocal nor precise and did not eliminate all elements of subjectivity in the process of identifying and perceiving the sign claimed.

text: This part deals with single letters under

text: Article 7(1)

text: (b) EUTMR. For single letters under

text: Article 7(1)

text: (c) EUTMR, see the Guidelines, Part B, Examination, Section 4, Absolute Grounds for Refusal, Chapter 4, Descriptive Trade Marks (

text: Article 7(1)

text: (c) EUTMR), paragraph 2.8).

text: EUTM Main function Case No

text: EUTM No 5 904 438 MORE THAN JUST A CARD Customer service statement R 1608/2007-4 for Class 36 (bank, credit and debit card services)

text: Objected to under

text: Article 7(1)

text: (b) EUTMR The slogan merely conveys information about the goods and services for which protection is sought. It is the kind of language an English speaker would use to describe a bank card that is a little out of the ordinary. It conveys the notion that the card has welcome features that are not obvious at first sight. The fact that the slogan leaves open what these features are, that is to say, that the mark does not describe a specific service or characteristic of the ‘card’, does not make the mark distinctive.

text: EUTM Main function Case No

text: EUTM No 7 394 414 WE PUT YOU FIRST. (Examiner’s decision AND KEEP YOU Customer service statement without BoA case) AHEAD for Class 40

text: Objected to under

text: Article 7(1)

text: (b) EUTMR The mark is a promotional laudatory message, highlighting the positive aspects of the services, namely that they help to procure the best position in the business and maintain this position in the future.

text: EUTM Main function Case No

text: EUTM No 6 173 249 SAVE OUR EARTH NOW Value statement or political motto R 1198/2008-4 for Classes 3, 17, 18, 20, 22, 24, 25 and 28

text: Objected to under

text: Article 7(1)

text: (b) EUTMR The sign is a simple and straightforward appeal to take action and contribute to the Earth’s well-being by favouring the purchase of environment-friendly products. Contrary to the appellant’s contentions that the word ‘now’ constitutes an original element since nobody will believe that by purchasing the goods in question they will literally save the Earth now, the word ‘NOW’ is an emotional word commonly used in marketing to urge consumers to consume, to get what they want without waiting; it is a call to action. The relevant consumer will immediately recognise and perceive the sign as a promotional laudatory expression indicating that the goods represent an environment-friendly alternative to other goods of the same sort, and not as an indication of commercial origin.

text: EUTM Main function Case No

text: EUTM No 4 885 323 DRINK WATER, NOT Inspirational or motivational statement R 718/2007-2 SUGAR for Classes 32 and 33

text: Objected to under

text: Article 7(1)

text: (b) EUTMR The mark is a banal slogan that merely conveys the idea that the consumer will be drinking real water rather than a sugary drink. The mark lacks any secondary or covert meaning, has no fanciful elements, and its message to the consumer is plain, direct and unambiguous. For these reasons, it is unlikely to be perceived as a sign of trade origin. It is easily seen that the mark consists merely of good counsel, namely that it is better from a health point of view to drink water that has not been sugared. What better way to promote such goods than by an expression such as DRINK WATER, NOT SUGAR? Consumers will read this with approval, but will look elsewhere on the product for the trade mark.

text: EUTM Main function Case No

text: DREAM IT, DO IT! 02/07/2008,

text: , Classes 35, 36, 41 and Inspirational or motivational statement EU:T:2008:244 45

text: The relevant English-speaking public will see this as an invitation or encouragement to achieve their dreams and will understand the message that the services covered by that trade mark will allow them to do so.

text: EUTM Main function Case No

text: VALORES DE FUTURO Value statement 06/12/2013,

text: , EU:T:2013:629 for Class 41

text: Objected to under

text: Article 7(1)

text: (b) EUTMR The relevant public when confronted with the expression VALORES DE FUTURO will perceive a laudatory message whose only objective is to give a positive view of the services involved.

text: EUTM Main function Case No

text: INVESTING FOR A NEW WORLD Value statement 29/01/2015,

text: Classes 35 and 36

text: Objected to under

text: Article 7(1)

text: (b) EUTMR The sign INVESTING FOR A NEW WORLD, considered as a whole, may be easily understood by the relevant public, in view of the common English words of which it consists, as meaning that the services offered are intended for a new world’s needs. Given that the services covered by the mark applied for are all related to activities connected with finance and have a close link with the word ‘investing’, the Board of Appeal was right to find that the message conveyed by the expression ‘investing for a new world’ was that, when purchasing the services in question, the money or capital invested created an opportunity in a new world, which carried a positive connotation. The Court also found that the fact that the expression at issue could be interpreted in a number of ways did not alter its laudatory nature.

text: EUTM Main function Case No

text: SO WHAT DO I DO WITH MY MONEY Value statement 29/01/2015,

text: Classes 35 and 36

text: Objected to under

text: Article 7(1)

text: (b) EUTMR The expression ‘so what do I do with my money’ prompts consumers to ask themselves what they should do with their financial resources and assets. In the present case, the average reasonably well-informed and reasonably observant and circumspect consumer of the services covered by the application for registration will, on reading or hearing that expression, wonder whether he or she is using his or her money effectively.

text: EUTM Main function Case No

text: PIONEERING FOR YOU Value statement 12/12/2014,

text: , EU:T:2014:1067 Classes 7, 9, 11, 37 and 42

text: Objected to under

text: Article 7(1)

text: (b) EUTMR The sign would be understood as ‘innovative for you’. The meaning of the sign is clear and does not leave any doubts. The structure of the sign is grammatically correct and does not trigger any mental process in order to arrive at its meaning. It is, as a whole, a simple message that could be attributed to any producer or service provider with the natural consequence that it does not indicate the origin of the goods or services

text: EUTM Classes Case No

text: R 879/2011-2, SITEINSIGHTS Classes 9 and 42 EUTM No 9 284 597

text: The mark ‘SITEINSIGHTS’ shows some degree of originality and expressiveness, which makes it easy to remember. It contains a play on words as the word ‘SITE’ and the ‘SIGHT’ element of ‘INSIGHTS’ are pronounced identically.

text: EUTM Classes Case No

text: , WET DUST CAN’T FLY Classes 3, 7 and 37 EU:T:2015:46

text: The concept of ‘wet dust’ is literally inaccurate, since dust is no longer dust when it is wet. Consequently, the juxtaposition of those two words gives that concept a fanciful and distinctive character.

text: EUTM Classes Case No

text: , LOVE TO LOUNGE Class 25 EU:T:2017:607

text: When the mark is used in relation to the goods in question, namely clothing, footwear and items of headgear, the relevant public will have to place that mark in a certain context, which requires an intellectual effort. The contested mark will enable consumers to identify the commercial origin of the goods at issue. Consequently, that mark has inherent distinctive character.

text: Sign Goods and services Reasoning Case No

text: The sign consists merely of a normal pentagon, a simple geometric figure. The geometric form, if it happened to be the 12/09/2007,

text: , Class 33 form of the label, would Pentagon be perceived as having a functional or aesthetic purpose rather than an origin-indicating function.

text: The sign will be perceived as an excessively simple geometric shape, essentially as a parallelogram. To fulfil the identification function of a trade mark, a parallelogram should contain elements that 13/04/2011,

text: , Classes 9, 14,16, 18, 21, singularise it in relation Parallélogramme, 24, 25, 28, 35-39, 41-45 to other parallelograms’ EU:T:2011:176 representations. The two characteristics of the sign are the fact that it is slightly inclined towards the right and that the base is slightly rounded and elongated towards the left. The general consumer would not perceive such nuances.

text: The sign does not contain any elements that may be easily and instantly memorised by an attentive relevant public. It will be 29/09/2009,

text: , Classes 14,18, 25 perceived only as Smiley, EU:T:2009:364 a decorative element, regardless of whether it relates to goods in Class 14 or to those in Classes 18 and 25.

text: The sign consists of merely a simple geometric figure in green. The specific colour is commonly 09/12/2010,

text: , and widely used in Classes 3, 18, 24, 43, 44 Carré convexe vert, advertising and in EU:T:2010:508 marketing goods and services because of its power to attract without giving any precise message.

text: Relying on the applicable case-law, that simple geometric shapes cannot, in and of themselves, convey content that consumers could permanently remember and in consequence perceive such shapes or figures as fulfilling the function of trade marks (12/09/2007,

text: , Pentagon, EU:T:2007:271, § 22), the Board concluded that the same applies in the case at hand, where the mark consists not of one, but of three basic geometric shapes placed on one row and forming a simple sequence of shapes. (§ 16) The Board found that in case of everyday goods such as cosmetics, foodstuffs,

text: stationery, clothing and

text: accessories, as well as games and toys,

text: publications, books and

text: Classes 3, 5, 16, 18, 25, magazines in Classes 3, 14/11/2017, 28, 35 5, 16, 18, 25 and 28, R 1028/2017‑5 as well as for specialist office machines in Class 16 and retail and wholesale services in Class 35, regardless of the attention paid by the consumers at the moment of purchase, consumers will not be

text: of simple blue geometric

text: shapes as a trade mark and memorise such sign as an indication of the origin of the goods and services in question. (§ 19-21) Therefore, this sequence of shapes, rather than distinguishing the abovementioned

text: goods and services

text: as originating from a given undertaking from those originating from others, will be merely perceived as a decorative element for aesthetic or ornamental purposes (05/04/2017,

text: , Device of two drawn lines (fig.) EU:T:2017:253, § 40).

text: The trade mark in question consists of an elongated oval with a forward slash above it. Taken as a whole, this is an extremely simple figurative sign, and none of the elements have any unusual features in themselves. It only departs from a regular geometric oval shape insofar as the top curve is slightly wider than the bottom curve. This is, however, barely noticeable when simply looking at the sign and, in any case, does not prevent the geometric design from remaining 09/12/2015, Classes 8, 14, 21 simple (para. 15). R 340/2015‑1 In the present case, distinctive character is not possessed by the simple shape of the oval, the simple line above it or the two together. Taken together, it is a banal designation which, owing to the simplicity thereof, is not capable, on its own, of being perceived by the relevant public as an indication that enables the commercial origin of the goods at issue to be identified without any likelihood of confusion with goods of a different origin (para. 17).

text: Sign Goods and services Reasoning EUTM No

text: The sign gives the impression of overlapping triangles, but this is actually just an illusion formed by one single line. Classes 35, 41 EUTM No 10 948 222 It is not a simple juxtaposition of basic shapes, but rather a creative arrangement of lines giving a distinctive overall impression.

text: The figure applied for is not so simple that it can be denied registration. It is certainly restrained in detail in its execution, but taken in its entirety it is neither a simple geometric figure, nor a mark that is entirely 28/09/2015, Classes 1, 5, 40, 42, 45 banal for the purposes of R 1953/2014‑2 trade mark law. As noted by the applicant, the mark can be interpreted in different ways, e.g. as a stylised letter ‘X’ or as two arrows pointing towards each other (para. 21).

text: The sign consists of two parallelograms in greyscale, one next to the other, placed on a white background. Altogether they form something definitely more than a simple geometric shape. Bearing in mind the nature of the goods and services at issue Classes 4, 7, 12, 37, 42 (oils, greases in Class 4, EUTM No 1 457 644 engines, generators in Class 7, vehicles in Class 12, installation services in Class 37 and design in Class 42) the sign will be seen as something more than a mere decorative element. The sign has a minimum degree of distinctive character.

text: The GC confirmed the finding of the BoA that the trade mark applied for is devoid of the necessary degree of distinctive character. It consists merely of a punctuation mark with no special additional features immediately apparent to customers, and is a commonplace Classes 14, 18 and 25 EUTM No 5 332 184 sign that is frequently used in business or in advertising. In view of its frequent use, the relevant consumer will see the exclamation mark as being merely laudatory advertising or something to catch the eye (30/09/2009,

text: ,!, EU:T:2009:374).

text: The sign applied for was refused because, in the case of the goods for which the trade mark is protected (foodstuffs and beverages), percentages are particularly important in relation to the price. For example, the percentage sign indicates clearly that there is a favourable cost/benefit ratio because the price has been reduced by a particular percentage in comparison with the Classes 29, 30, 31 and normal price. Such a EUTM No 5 649 256 32 per cent sign in a red circle is also frequently used in connection with clearance sales, special offers, stock clearances or cheap noname products, etc. The consumer will regard the sign merely as a pictogram conveying the information that the goods for which the trade mark is protected are sold at a reduced price (16/10/2008, R 998/2008-1 , Percent sign (fig.)).

text: Sign Reasoning Case No

text: Taking into account the kind of goods and services for which protection is sought in Classes 9, 35, 36, 38 and 42 (for example, cash dispensers, banking services), the public will see the sign as a practical indication or as directional arrows showing where the magnetic card has to be inserted into the 02/07/2009,

text: , Main distributor. The association of the tenant une carte, EU:T:2009:242 triangles with the other elements of the trade mark applied for means that the public concerned will perceive them as directional arrows. Consumers see this type of practical information every day in all kinds of places, such as banks, supermarkets, stations, airports, car parks, telephone boxes, etc. (paras 37-42).

text: Sign Reasoning Case No

text: This sign was refused as it is identical to the core of the international safety symbol for ‘high voltage’ or ‘caution, risk of electric shock’. The device applied for, within the triangle denoting a hazard symbol, 21/09/2012, R 2124/2011-5, has been officially defined by DEVICE OF LIGHTNING ISO 3864 as the standard high BOLT(fig.) voltage symbol. Because this EUTM No 9 894 528 sign essentially coincides with the for goods in Class 9 customary international sign to indicate a risk of high voltage, it was refused, inter alia, under

text: Article 7(1)

text: (b) and (d) EUTMR.

text: Sign Reasoning Case No

text: Refused for goods in Class 9. It is a well-known fact that a great variety of software applications are available for mobile phones, tablet computers, standard computers or other digital electronic devices, and that such applications, once they are installed, are often represented by a symbol (icon) that makes the application easily accessible for its user. Such symbols can be designed in various ways, ranging from a simple image of a clock, camera or a book, which 25/01/2016, will represent the nature of the underlying software application, R 1616/2015-5, to an arbitrary symbol and/or a A B C D (fig.) trade mark that in itself does Class 9 not reveal anything about the software it is used for (para. 18). The inclusion of a person’s silhouette on a square shaped background is a natural way of designing icons that, when used in mobile phones, tablet computers, standard computers or other digital electronic devices, will be seen as representing an application for managing contact information, such as telephone numbers and/or addresses (para. 19 et seq.).

text: Sign Reasoning Case No

text: Refused for goods in Class 9 and services in Class 38. An email system running on a computer or handheld device (e.g. tablet or mobile phone) must use ‘icons’ to represent the current status of an application 05/04/2016, or operation. There is no more apt ‘icon’ - which is nothing R 2256/2015-2, more than a small graphic DEVICE OF AN OPEN representation of a program or ENVELOPE WITH A CHECK file - to represent an electronic SIGN (fig.) Classes 9 and 38 message than an envelope. The ‘tick’ indicates that something has been done correctly or that something has been checked (paras 16 and 17). It is well known what these kind of icons look like (para. 19).

text: Refused for goods in Class 9. The public will encounter this used as a pictogram on a mobile phone, computer, tablet or similar to indicate access to a program EUTM No 12 717 914 or application that allows the user to make notes or write text. Some of these applications convert handwriting into typewritten text.

text: Sign Reasoning EUTM No

text: Accepted for goods and services in Classes 9 and 43. The representation, which could EUTM No 16 314 494 be perceived as an image of a stool, does not have any direct discernible meaning in relation to the goods and services at issue.

text: Accepted for goods and services in Classes 9, 24, 25 and 28. The sign has a complex design. The representation is very abstract and not naturalistic. What may appear to be a head consists only of a circle, which is separated from the body (which, as is well known, is not the case in nature), and the representation of the rest of the body does not correspond to a realistic arrangement and combination of human legs, arms and torso. Only at an abstract level can a 05/03/2018, swimmer on the point of diving be R 1759/2017-4 discerned (para. 15). It is true that the clothing for which protection is sought and the other goods claimed can be used, or even are expressly used, for swimming. If the sign applied for were applied to such goods, it could be argued that it would be perceived as an indication that the goods were suitable for bathing. However, the meaning of the sign applied for is not specific enough for this, as it is intended only to symbolise a human being and not a product. (para. 20).

text: Sign Reasoning Case No

text: The mark applied for is ‘devoid of any distinctive character’ and was refused under

text: Article 7(1)

text: (b) EUTMR as it is as banal and EUTM No 4 373 403, filed as a ordinary as it is possible to get 22/05/2006, R 1146/2005-2, three-dimensional mark claiming in relation to adhesive labels. The LABEL SHAPE (3D) protection for goods in Class 16 sign says a lot about the nature (Adhesive labels; adhesive labels of the goods and very little, if

text: for use with hand labelling

text: anything, about the identity of the

text: appliances; and labels (not of

text: producer (para. 11). textile))

text: Sign Reasoning Case No

text: The mark was refused, as its basic shape combined only with a bright yellow colour could not, in the minds of the relevant professional and general public, serve to distinguish the goods for which protection was sought as originating from a particular undertaking. Here, the colour yellow may be perceived as a decoration for the goods, as well as for the purpose of attracting attention to the goods, without 15/01/2013, R 444/2012-2, EUTM No 9 715 319 giving any specific information DEVICE OF A LABEL IN or precise message as to the COLOUR YELLOW (fig.) for goods in Classes 6, 7, 8, 9 commercial origin of the goods. and 20 In addition, as is generally known, bright yellow is commonly used in a functional way in relation to a wide range of goods, that is, inter alia, for increasing the visibility of objects, highlighting or warning. For these reasons, the relevant consumers will not recognise this colour as a trade mark, but will perceive it as an alert or decoration.

text: EUTM No 10 776 599 claiming, EUTM No 11 177 912 claiming EUTM No 11 171 279 claiming inter alia, goods in Classes 32 Classes 29, 30 and 31 Classes 29, 30 and 31 and 33

text: Sign Reasoning EUTM No

text: Registered for goods in Classes 16 and 21 The sign is clearly different to what is commonly expected for

text: EUTM No 1 705 367

text: the corresponding goods (paper, rolls of paper for household use, kitchen utensils and containers, etc.).

text: Registered for goods in Classes 36, 39 and 42, (insurance and financial services, rental and leasing of vehicles, and leasing of commercial and

text: EUTM No 715 524

text: industrial equipment). The shape is unrelated to the goods and services and therefore perfectly capable of distinguishing them.

text: Section 4 Absolute grounds for refusal — Chapter 3 Non-distinctive trade marks (

text: Article 7(1)

text: (b) EUTMR) principles about how those elements will be perceived depending on several factors. These principles apply to Step 3 and Step 4 (see below). Step 4: assessment of the distinctiveness of the sign as a whole The assessment of distinctiveness must be based on the overall impression of the combination of the shape and the elements to which it extends, in relation to the goods in question, and considering the consumer’s perception which can be influenced by specific market realities.

text: Sign Comments Example

text: Despite the very small size of this type of memory cards, the verbal element is large in proportion to the shape and can clearly be identified as a distinctive CP9 example element in the representation, thus rendering the sign as a Class 9 Secure digital memory whole distinctive. cards

text: Sign Comments Example

text: In this example, despite the large CP9 example non-distinctive verbal element on the non-distinctive shape, the sign is not distinctive as a whole. It contains descriptive information Class 3 Cosmetics about the goods in question on a simple geometrical shape, which is also non-distinctive.

text: Sign Comments Example

text: Small badges of origin are commonly used for goods such as business card holders or watches. Therefore, despite the small size of the verbal elements in proportion to the non-distinctive Class 18 Business card holders, shapes, the sign as a whole is in the nature of card cases distinctive as the verbal elements can be identified as distinctive elements in the representation, rendering the sign as a whole distinctive. CP9 examples

text: Class 14 Watches

text: In this specific segment, badges of origin are usually relatively small in proportion to the goods. The fairly small size of the verbal CP9 example element in proportion to the truck does not prevent it from being Class 12 Trucks clearly identified as a distinctive element.

text: Sign Comments Example

text: In these examples, the verbal/ figurative elements are so small that they cannot be identified in the representation and their distinctiveness cannot be determined. Therefore, they do not have sufficient impact on the overall impression and the sign as a whole is non-distinctive.

text: CP9 examples

text: Class 33 Wine

text: Class 9 Secure digital memory card

text: Sign Case No

text: R 1511/2013‑2 (26/11/2015,

text: , JK KANGOO JUMPS XR, EU:T:2015:897)

text: BoA confirmed that the figurative element ‘KANGOO JUMPS’ (in both the upper and lower spring layers) and the letters ‘KJ’ and ‘XR’ (at the ends of the intermediate elastic plastic straps) could only be seen with great difficulty or not at all. Parts such as these, which can only be noticed on close inspection, are, in general, not to be perceived as an indication of origin (para. 29). The GC confirmed the BoA decision, stating that ‘… the word and figurative elements of the mark … are extremely minor … and, therefore … of such a superficial nature that they do not bring any distinctive character to the mark applied for as a whole.’ (para. 27)

text: Sign Case No

text: , Vibrator, EU:T:2013:26

text: The Court considered that the descriptive element ‘fun’ could not confer distinctiveness on the 3D sign. Moreover, the BoA was right not to take into account the element ‘factory’ written above the word ‘fun’, as it was illegible in the application (para. 34 et seq.).

text: Sign Comments Example

text: Despite the use of less contrasting colours, the figurative element on the bottle is still capable of conferring distinctive character to the sign as a whole as the element can clearly be identified as distinctive in the representation.

text: CP9 example

text: Class 33 Wine

text: Sign Comments Example

text: Despite the use of less contrasting colours between the verbal element and the bottle, the first can still be identified as distinctive, therefore, the overall impression results in the sign being perceived as distinctive as CP9 example a whole.

text: Class 32 Bottled drinking water

text: Sign Comments Example

text: In this case, the element (the gorilla, indicated by the arrow for clarity purposes only) cannot be clearly identified without close inspection due to a CP9 example lack of contrast between the element and its background. The combination does not Class 28 Playing balls render the sign as a whole distinctive.

text: Sign Comments Example

text: The embossed element can be identified as distinctive in the representation and therefore, the sign is distinctive as a whole.

text: CP9 example

text: Class 32 Beverages The engraved element can also be identified as distinctive in the representation shown, therefore, the sign is distinctive as a whole. CP9 example

text: Class 16 Pencil boxes

text: Sign Comments Case No

text: EUTM No 12 485 702

text: Classes 29, 30, 32

text: Sign Comments Example

text: The engraved figurative element does not have enough contrast with respect to the shape and therefore cannot be clearly CP9 example identified in the representation. It therefore cannot render the sign as a whole distinctive. Class 11 Toaster

text: Sign Comments Example

text: This non-distinctive element (simple geometric shape – circle) which has been engraved on the non-distinctive shape does not bring distinctiveness to the sign as a whole. The overall impression is non-distinctive as the consumer will not be able to distinguish this good as originating from a specific undertaking.

text: CP9 example

text: Class 32 Bottled drinking water

text: Sign Comments Cases

text: It is a well-known fact that bottles usually contain lines and creases on them. The relief at the top is not sufficiently striking and will be perceived as a mere decorative element. As a whole, 19/04/2013,

text: , the combination of the elements Getränkeflasche, EU:T:2013:201 is not sufficiently distinctive. The average consumer of the goods in Class 32 would not consider the shape as an indicator of origin of the goods in Class 32.

text: An image depicting certain stones is embossed on the central part of the bottle. The Court confirmed the BoA decision when it considered that the applicant had failed to prove that European consumers have sufficient information and knowledge to recognise that the embossing on the central part of the bottle at issue depicts the twelve-angle stones used in Inca constructions. Without that 12/07/2012,

text: , Botella, proof, European consumers will EU:T:2012:376 merely perceive the embossing as such without being aware of its significance, from which it follows that they will simply perceive it as a mere decoration without any distinctive character, because it is not particularly original or striking; therefore, it will not serve to differentiate the bottle in question from other bottles widely used in the packaging of beers (para. 25 et seq.).

text: Sign Comments Example

text: The verbal and figurative elements can be identified as distinctive in all of the examples, regardless of their position and thus render each sign distinctive as a whole. Although signs of origin are not commonly placed in the bottom Class 32 Bottled drinking water part of a bottle, as shown in CP9 examples the last example, this possibility cannot be excluded.

text: Class 32 Bottled drinking water Badges of origin can be commonly found on the insole of shoes. In this case, the distinctive element has been placed in an expected position, and it can CP9 example Class 25 Shoes clearly be identified as distinctive in the representation, therefore, it is able to render the sign distinctive as a whole.

text: Sign Comments Example

text: The label containing the descriptive verbal element, placed in a typical position for this type of packaging of goods, does not render the sign distinctive as a whole.

text: CP9 example

text: Class 33 Wine

text: Distinctive Sign Non-distinctive Sign Comments Example

text: The verbal element ‘CLOSE’ bears no relation to the goods in Class 3. When placed centrally, the verbal element is perceived as distinctive, as it does not provide a descriptive indication of the good. Therefore, CP9 example the sign as a whole is distinctive. However, when placed at the top of the Class 3 Cosmetics Class 3 Cosmetics product, next to the lid, it will be perceived as a descriptive indication of the opening/closing function of the lid.

text: Sign Comments Example

text: Consumers will not perceive the addition of a single yellow colour to the shape as an indication of origin. Use of colour on this CP9 example type of goods is common on the market.

text: Class 9 Memory card

text: Sign Comments Case No

text: This representation of a tablet 19/09/2001,

text: , red-white for washing or dishwashing squared washing tablet (fig.), preparations in tablet form was EU:T:2001:223 refused. The shape, namely a rectangular tablet, is a basic shape and an obvious one for a product intended for use in washing machines or dishwashers. The slightly rounded corners of the tablet and the colour chosen are not of a kind to attract the consumer’s attention, so the overall impression will not indicate commercial origin (19/09/2001,

text: , red-white squared washing tablet (fig.), EU:T:2001:223, § 43-44, 53). The same approach has been confirmed by several judgments, including that of 04/10/2007,

text: P, Tabs (3D), EU:C:2007:577.

text: Sign Comments Example

text: This particular colour arrangement applied to the wind turbine is unusual in the market and simple enough to create a memorable overall impression for the specialised consumer to recall as a means of CP9 example identification.

text: Class 7 Wind turbine

text: Sign Comments Example

text: For mobile phone cases, use of colour combinations is common in the market. Therefore, the consumer will not perceive this colour combination as an indication of origin, but as mere decoration for these goods. The sign is not distinctive as a whole. CP9 example

text: Class 9 Mobile phone cases

text: Sign Comments Example

text: The size, position and lack of contrasting colours of the verbal element result in a non-distinctive overall impression. The element cannot be identified as distinctive on the good without a very close inspection, as it has been placed in a less visible place on the bottle, using a very small size and a poor use of contrast. Therefore, it cannot render the mark distinctive as a whole.

text: CP9 example

text: Class 33 Wine

text: Sign Reasoning Case No

text: The shape applied for was refused as it was considered that bunny-shaped chocolate with gold wrapping is a common phenomenon on the market corresponding to the industry concerned. An analysis of the 24/05/2012,

text: P, Hase, individual elements, that is, EU:C:2012:307 the shape of a rabbit, the gold foil wrapping and the red ribbon with a bell, were held both individually and cumulatively devoid of distinctive character (paras 44-47).

text: Sign Comments Example

text: The size of the (verbal) element and its contrast with the goods enable it to be identified as CP9 example distinctive: together, they give a Class 9 Glasses distinctive overall impression.

text: Sign Comments Example

text: The verbal and figurative elements are non-distinctive as they provide descriptive information of the goods in question. Although placed in a central position on the shape, and despite their large size and sufficient contrast, they are unable to render the sign distinctive as a whole, as the consumer will not perceive the combination as a source of origin.

text: CP9 example

text: Class 33 Wine

text: Sign Comments Example

text: The descriptive elements have been arranged in a way that they create the shape of a sun or a flower; a combination which can be perceived as a badge of origin CP9 example and which therefore renders the sign distinctive as a whole.

text: Class 30 Chocolate

text: Sign Comments Example

text: Despite the combination of many non-distinctive elements, the verbal element ‘ECS’ can be identified as distinctive in the representation due to its size, CP9 example Class 30 Chocolate position and contrast with respect to the good, and therefore it is able to render the sign distinctive as a whole.

text: Sign Comments Example

text: The verbal element ECS is lost within multiple non-distinctive elements. Due to its position, size and lack of contrast, it cannot CP9 example be identified as distinctive without Class 30 Chocolate close inspection and therefore, cannot render the sign distinctive as a whole.

text: Sign Reasoning Case No

text: The parrot figure applied for, R 2131/2013‑5 on its own, does not depart sufficiently from the usual form of parrot toys to be seen as a trade mark. Its coat colour resembles the green quite common among parrots. Its head is bigger than normal and it is standing on its hind legs but, in the Board’s opinion, the majority of consumers would perceive the parrot shape as an ordinary parrot-shaped toy design, and a rather banal toy, but not as an indication of origin (para. 16).

text: Sign Reasoning Case No

text: Accepted for toys EUTM No 15 240 534

text: Accepted for toys EUTM No 18 140 709

text: Accepted (among other goods in EUTM No 18 007 266 class 28) for toys

text: Accepted (among other goods in EUTM No 16 395 361 class 28) for toys

text: Sign Reasoning Case No

text: This shape was refused as it is merely a variant of a common shape of this type of product, i.e. 07/10/2004,

text: P, Torches flashlights (para. 31).

text: The Court of Justice confirmed the refusal of this threedimensional sign as not being sufficiently different from the shapes and colours of those commonly used in the sweet and chocolate sectors. The combination with figurative elements will not lead to the 06/09/2012,

text: P, application of the criteria for two- Milchmäuse, EU:C:2012:537 dimensional marks.

text: This shape mark consisting of a handle, applied to goods in Class 8 (hand-operated implements used in agriculture, 16/09/2009,

text: , Teil des horticulture and forestry, including Handgriffes, EU:T:2009:336 secateurs, pruning shears,

text: hedge clippers, shearers (hand

text: instruments)) was refused. The General Court confirmed the case-law on non-distinctiveness of shape marks in the form of a product or its packaging. Even if the oval shape in the 12/12/2013,

text: , Oval, EUTM application has a complex EU:T:2013:642 hollow on its surface, this cannot be considered as significantly different from the shapes of confectionery available on the market.

text: Sign Reasoning EUTM No

text: Accepted for ice creams EUTM No 10 350 593 Confirmed by the Boards of Appeal in R 590/2015‑4

text: Accepted for pumps,

text: EUTM No 5 242 433

text: Accepted in Class 9, protective

text: covers for mobile phones

text: EUTM No 12 269 511

text: Sign Reasoning Case No

text: Class 35 – Retail Services for various goods and services. The case-law on marks consisting of the shape of the goods applies also with respect to services. The ‘get-up’ or appearance of services consists, in particular, of the environment in which they are offered and/or the means used in order to provide the services to the relevant consumer. Such ‘get-up’ is only distinctive where it significantly R 2224/2015‑1 departs from the norms of the relevant sector. The salesroom depicted in the application will be perceived as having the merely functional purpose of enabling consumers to purchase conveniently the goods and services offered for inspection and sale. The first instance decision regarding the mark’s lack of distinctive character was confirmed by the Board.

text: Sign Reasoning Case No

text: The mark, the representation of a twisted wrapper serving as packaging for sweets (and thus not the product itself), was refused registration as it is a ‘normal and traditional shape for a sweet wrapper and … a large number of sweets so wrapped could be found on the market’ 10/11/2004,

text: , (para. 56). The same applies Bonbonverpackung, in respect of the colour of the EU:T:2004:330 wrapper in question, namely ‘light brown (caramel)’. This colour is not unusual in itself, and neither is it rare to see it used for sweet wrappers (para. 56). Therefore, the average consumer will not perceive this packaging in and of itself as an indicator of origin, but merely as a sweet wrapper.

text: Sign Reasoning Case No

text: The refusal of the shape applied for was confirmed by the General Court. The elongated neck and the flattened body do not depart from the usual shape of a bottle containing the goods for which protection was sought, namely food products including juices, condiments and dairy products. In addition, neither the length of the neck, its diameter nor 15/03/2006,

text: , the proportion between the width Plastikflaschenform, and thickness of the bottle is EU:T:2006:84 in any way individual (para. 50). Furthermore, even if the ridges around the sides of the bottle could be considered distinctive, these alone are insufficient to affect the overall impression given by the shape applied for to such an extent that it departs significantly from the norm or customs of the sector (para. 53).

text: The shape does not depart significantly from the norms and 07/05/2015,

text: P, Bottle, customs of the sector, ‘where EU:C:2015:303, confirming what is involved is the packaging 28/05/2013,

text: , Bottle, of a liquid product and the sign EU:T:2013:272 consists of the appearance of the product itself’.

text: Sign Reasoning Case No

text: Accepted for goods in Classes 4 EUTM No 12 491 858 and 11

text: The Board of Appeal annulled the decision refusing the registration of the shape mark for chewing gums and other confectionery. R 832/2012-2 The Board of Appeal considered that the shape is not common in the market sector in question.

text: Sign Reasoning Case No

text: In this case, the General Court upheld an objection under

text: Article 7(1)

text: (b) EUTMR . The mark description specified that ‘The mark consists of the position of the circular and rectangular fields on a watch face’. The Court 14/09/2009,

text: , Uhr, considered that the mark was not EU:T:2009:324 independent or distinguishable from the form or design of the product itself and that the positioned elements were not substantially different from other designs on the market.

text: In this case involving hosiery consisting of an orange strip covering the toe area, the General Court considered that there was no evidence to suggest that the colouring of this part of the product would normally be perceived as having trade mark 15/06/2010,

text: , Strumpf, character. On the contrary, it was EU:T:2010:235 considered that this feature would be likely to be perceived as a decorative feature falling within the norms and customs of the market sector. The

text: Article 7(1)

text: (b) EUTMR objection was therefore maintained.

text: Sign Reasoning Case No

text: Buttons are common decorative elements of soft toys. A button is a simple geometrical form that does not depart from the 16/01/2014,

text: , Knopf im norm or customs of the sector. Stofftierohr, EU:T:2014:8 It is not uncommon to attach badges, rings, ribbons, loops & and embroidery to the ears of 16/01/2014,

text: , Fähnchen a soft toy. The relevant public im Stofftierohr, EU:T:2014:6 will therefore perceive the two signs applied for as ornamental elements but not as an indication of commercial origin.

text: Sign Description EUTM No

text: Class 25 Description: the trade mark is a position mark. It consists of a figurative element placed on the outer surface of the upper part of a shoe, extending lengthwise EUTM No 13 755 244 from the centre of the cuff of the shoe down to the sole. The dotted line shows the position of the trade mark on the shoe, and does not form part of the trade mark.

text: Sign Reasoning Case No

text: The criteria for shape marks consisting of the appearance of the product itself are also applicable to figurative marks consisting of the appearance of the product itself. In general, a mark consisting of a decorative pattern that is simple and commonplace is considered 19/09/2012,

text: , devoid of any element that could Stoffmuster, EU:T:2012:439, attract the consumers’ attention, § 47-48 and insufficient to indicate the EUTM No 8 423 841, filed as a source or origin of goods or figurative mark in Classes 18, 24 services. The above pattern and 25 mark was a textile pattern and therefore considered to comprise the appearance of the goods itself, as the mark was applied for in Classes 18, 24 and 25.

text: In this case, similarly to the 19/09/2012,

text: , previous case, the General Court Stoffmuster confirmed the refusal of the mark.

text: EUTM No 8 423 501, filed as a figurative mark in Classes 18, 24 and 25

text: Sign Reasoning Case No

text: Where the mark consists of a stylised representation of the goods or services, the relevant consumer will see prima facie the mere representation of the entire product or a specific part thereof. In this case of an application Examiner’s decision without BoA for tyres, the relevant consumer case would perceive the mark as merely a representation of the grooves of a tyre, and not an EUTM No 5 066 535 filed as a indication of source of origin. The figurative mark in Class 12 (tyres) pattern is banal and the mark cannot fulfil its function as an indicator of origin.

text: The mark was rejected for Classes 18 and 25. It was accepted for Class 16. Though the sign was described as a ‘series of stylised V letters’, the sign would most probably be Examiner’s decision without BoA perceived by the relevant public case either as a series of zigzag EUTM No 9 526 261, filed as a stitching or as a set of rhomboidal figurative mark (Series of stylised geometric figures. In any case, V letters), claiming goods in the pattern is quite simple and Classes 16, 18 and 25 banal and thus devoid of any distinctive character.

text: Sign Reasoning Case No

text: The mark, which was to be applied to glass surfaces, was refused under

text: Article 7(1)

text: (b) EUTMR. It was reasoned that the relevant consumer is not used to perceiving designs applied to glass surfaces as an indication of origin and that the design is recognisable as a functional component to make the glass opaque. Furthermore, 09/10/2002,

text: , Glass the complexity and fancifulness Pattern, § 26-28 of the pattern are insufficient EUTM No 3 183 068, filed as to establish distinctiveness, a figurative mark, for goods in attributable to the ornamental Classes 19 and 21 and decorative nature of the design’s finish, and do not allow the design’s individual details to be committed to memory or to be apprehended without the product’s inherent qualities being perceived simultaneously.

text: Sign Reasoning Case No

text: The mark was refused as it is composed of very simple elements and is a basic and banal sign as a whole. For the claimed goods, such as cleaning cloths and antiseptic wipes, the sign applied for can represent their appearance in the sense that the fabric used may have this structure. The sign is merely a repetition of identical squares that does not display any element or noticeable variation, in particular 14/11/2012, R 2600/2011-1, in terms of fancifulness or as DEVICE OF A BLACK AND regards the way in which its WHITE PATTERN (fig.) EUTM No 10 144 848, filed as components are combined, that a figurative mark for goods in would distinguish it from the usual Classes 3, 5, 6, 10, 11, 12, 16, representation of another regular 18, 20 and 21 pattern consisting of a different number of squares. Neither the shape of each individual square nor the way they are combined is an immediately noticeable feature that could catch the average consumer’s attention and cause the consumer to perceive the sign as a distinctive one.

text: Sign Reasoning EUTM No

text: Classes 16, 18, 25 EUTM No 15 602

text: Sign Reasoning EUTM No

text: Classes 18, 20, 21, 24, 25, 27 EUTM No 3 191 301

text: Classes 5, 10 Barring specific cases 09/09/2020,

text: where laws or regulations mandate the use of certain colours, manufacturers sell inhalers in a variety of colours (para. 44). Per the Good

text: practice guide on

text: risk minimisation and

text: prevention of medication

text: errors by the European Medicines Agency (EMA), colour coding is not usually recommended in the medicinal products market given the limited range of available colours and the lack of common understanding of colour coding conventions (para. 45). However, as the Board of Appeal rightly noted in paragraph 33 of the contested decision, the EMA’s good practice guide does recommend considering the choice of colour when designing the product, to ensure there is no risk of confusion with other established products where informally agreed colour conventions exist. The example given in that regard in the guide is precisely that of inhalers for respiratory ailments (para. 46). It follows then that, on the relevant market, colours can be used

text: to the public on the

text: characteristics of the goods. The applicant’s arguments fail to show that the goods for which registration is sought consitute a specific category that escapes the rules and practice, even informal, applicable in a market, which the applicant themself described as restricted during the hearing (para. 52).

text: Classes 9, 12, 14, 16, The three colours 11/07/2019, 18, 24, 25, 28 making up the mark R 0381/2019‑4 are clearly separated. They are relatively easy to remember and the three sections are equally proportioned. None of the colours represents a typical natural colour of the goods; the examiner did not argue otherwise for any category of goods from the extensive list of refused goods (para. 15). The mark is not too complex to be memorised. It is not a sequence of irregularly arranged coloured fields or boxes, or a rainbow-like sequence representing the full colour spectrum, or any other type of colour pattern that would be too complex for an average consumer to easily memorise (12/11/2008,

text: , Farben in Quadraten, EU:T:2008:492, § 47; 04/07/2014, R 365/2014‑4 , Vielfarbiger Streifen, § 10; 19/02/2014, R 1317/2013‑4 . Farbverlauf Regenbogen, § 10) (para. 18).

text: A two note ‘tune’ has no impact on the consumer and will only be perceived by the 35, 36, 38, 39, 41, 42 EUTM No 4 010 336 consumer as a very [Two musical notes, F banal sound, such as and C] the ‘ding-dong’ of a doorbell.

text: Machine-generated blip that is commonly emitted 9, 38 EUTM No 9 199 167 by computers and other [Two extremely short electronic devices. blips]

text: Sound constitutes a warning signal and a 9, 16, 28 direct characteristic of R 2444/2013‑1 [Ping sound, resembling the goods for which a warning signal] protection is sought.

text: Sound typically linked to the goods and services 9, 12, 35 R 1338/2014‑4 for which protection is sought. [Machine-generated synthesised sound]

text: A national anthem is in [The first 13 notes of ‘La the public domain. This Marseillaise’] necessarily implies that it is a non-distinctive Any Invented example sign as it will not be perceived as an indicator of commercial origin.

text: Although – as regards certain goods or services – a sound may be commonly used to identify a good or service as coming from a particular undertaking, such sound cannot be perceived either (i) as a functional element or (ii) as an indicator without any inherent characteristics. 13/09/2016,

text: , In particular, a sound SON D’UN JINGLE 9, 38 and 41 sign characterised by SONORE PLIM excessive simplicity will PLIM (sound mark), not be perceived as a EU:T:2016:468 trade mark. In the present case, the mark applied for is a very simple sound motif, that is to say, in essence, a banal and commonplace ringing sound that would generally go unnoticed and would not be remembered by the target consumer.

text: The sign claimed consists of a sequence of electronically R 2721/2019‑4 , generated (synthetic) (SONIDO DE UNA sounds, which lasts only CAJA CHINA CON EUTM No 17 622 663 9, 16, 35, 41, 42 2 to 3 seconds. The UN AUMENTO DE overall impression is LA DIAMICA EN LA that of a very short, PRIMERA NOTA) dissonant electronic tone sequence.

text: The sound perceived in the mark can be easily connected to (Sound of a door bell) the goods for which 9: door bells CP11 example Link protection is sought. Therefore, the mark would be considered non-distinctive.

text: The relevant consumer perceives the first element of the mark –

text: the sound of opening

text: a can – as purely technical and functional. This is because it is intrinsic to a specific technical solution for handling and consuming the beverages applied for (§ 40). Its second sound element –

text: the sound of fizzing

text: bubbles – is perceived as referring to the drinks for which protection is sought (§ 42). Perceived in its entirety, the mark is not distinctive (§ 43, 48). This is so despite the silence of ten seconds between the two sound elements and the length (nine seconds) of the second sound element. Such nuances of the (07/07/2021,

text: , classic sounds made KLANG EINES (Sound of an opening by drinks when their GERÄUSCHES, can) container is opened 6, 29, 30, 32, 33 WELCHES MAN are perceived as mere Link BEIM ÖFFNEN EINER

text: variants of the usual

text: GETRÄNKEDOSE sounds (§ 45). HÖRT, EU:T:2021:420) They are not

text: sufficiently resonant to

text: distinguish them from

text: comparable sounds

text: (§ 46). Just because the sound of fizzing bubbles is usually shorter and immediately follows the sound of opening a

text: can does not confer

text: FINAL VERSION 1.0any significance on the 01/07/2026

text: sounds allowing the

text: relevant consumer to

text: identify them as an

text: indicator of business

text: origin of the goods

text: (§ 47). The combination of

text: the sound elements

text: and the silent element

text: is not unusual in its structure. Rather, these elements correspond, as they are predictable

text: and common in the

text: drinks market (§ 48).

text: The sign is short but N/A (electronic file) it is not too simple 9, 35, 36, 37, 38, 39, 42, [Short sequence of and is capable of EUTM No 17 396 102 43, 44, 45 easily identifiable tones] being memorised by the relevant consumer.

text: N/A (electronic file) 3, 9, 16, 25, 28, 35, 41, Clearly pronounced EUTM No 17 700 361 [Human voice] 43 distinctive word (barça)

text: Jingle-like sound [sequence of four R 2056/2013‑4 KLANG sequences are capable different tones, initially 16, 35, 42 DER PSD-BANK MUSIK of identifying goods and falling by a fourth and (KLANGMARKE) services. then rising and ending on the median]

text: [The first two shorter A notes sound less According to general powerful than the life experience, jingle- R 87/2014‑5 following long and higher like sound sequences KLANG EINER 9, 16, 35, 36, 41, 42 C note. The higher and enable goods and NOTENSEQUENZ longer C note is thus services to be (KLANGMARKE) accentuated on account distinguished. of its pitch, length and strength]

text: The present jingle has a somewhat more complex sequence of R 2821/2019‑1 , 10: electronical and tones than the usual 23/07/2020 (KLANG EUTM No 18 063 460 medical apparatus and operating signals from VON BASS: D3; A3, sanitary installations, electronic devices, which ACHTENPAUSE UND are only perceived as HÖHEN; E6; A5) simple signal tones (para. 19)

text: The length and complexity of the sequence of notes gives it a certain resonance, enabling it to 41: Providing films for Link function as an indication CP11 example

text: entertainment purposes

text: of commercial origin. Therefore, the melody is considered distinctive for the services for which protection is sought. The sound perceived in the mark has no link to the goods for which protection is sought and (Sound of a mooing has sufficient resonance 11: toilets CP11 example cow) Link to be recognised by the consumer as an indication of commercial origin. Therefore, it is considered distinctive.

text: Partial representation

text: of sign (for reference Classes Case No Comments

text: Outline of a red apostrophe on a white background, over which EUTM No 17 894 840 9, 35, 38, 41 appears the slogan ‘The future is exciting’, which is then replaced with the word ‘Ready?’ The word ‘TIMEQUBE’ on a white background, accompanied by a cube, which changes colour, 14 EUTM No 17 911 214 from white to green to yellow to brown to red, and all shades in between. The figurative element in the motion mark is considered distinctive in itself. Combined with the 9: computers CP11 example changing colours the consumer will perceive it as indication of commercial origin for the goods applied for.

text: Partial representation

text: Considering that the movement of the nondistinctive/descriptive verbal element ‘Premium’ is not unusual or striking, the sign is not capable 3: washing powder CP11 example of being recognised by the consumer as an indication of commercial origin. Therefore, the motion mark is considered nondistinctive. This motion contains too many elements to leave a lasting impression on the consumer. It would be perceived just as a 39: travel services CP11 example video clip of a street view. Therefore, it lacks inherent distinctiveness and will not be perceived as an indication of commercial origin.

text: Partial representation

text: EUTM No 17 279 704 Registered

text: Although the image is considered nondistinctive/descriptive in relation to goods applied for, the combination 31: fresh bananas CP11 example with a distinctive verbal element, which Figure 2: is perceived in the multimedia mark, Link renders the mark distinctive.

text: Partial representation

text: The banality of the image and the sound, combined with the shortness of the video do not create a lasting impression on the 3: washing powder CP11 example consumer. Therefore, it lacks inherent distinctiveness and will Link not be perceived as an indication of commercial origin.

text: Partial representation

text: The combination of the distinctive verbal and figurative elements 12: cars CP11 example in the hologram mark makes the hologram mark distinctive as a Link whole.

text: Section 4 Absolute grounds for refusal — Chapter 4 Descriptive trade marks (

text: Article 7(1)

text: (c) EUTMR) Applications that consist of descriptive words or expressions repeated in various languages are a special case in the sense that they are mere translations of each other. These trade marks should be considered descriptive if the relevant consumer will grasp that each of the words or expressions is in fact merely the translation of a descriptive meaning, for example, because the proximity of the terms contained in the mark to each other will lead the consumer to understand that they all have the same descriptive meaning in different languages. For instance: EUTM No 3 141 017 ‘Le salon virtuel de l’industrie — Industry virtual exhibition —

text: Sign Reasoning Case No

text: The mark merely consists of ACTIVMOTION SENSOR ‘ACTIV’ (an obvious misspelling EUTM No 10 282 614 for goods of the word ‘ACTIVE’), ‘MOTION’ in Class 7 (swimming pool and and ‘SENSOR’. Combined, 06/08/2012, R 716/2012-4, spa cleaning equipment, namely, the words form a perfectly ACTIVMOTION SENSOR, § 11 sweepers, vacuums, and parts comprehensible and plainly therefor) descriptive combination, and the mark was thus refused.

text: The above term is a nonexistent word but closely resembles the Spanish adjective XTRAORDINARIO ‘extraordinario’. Spanish and International registration Portuguese consumers will 04/07/2008, R 169/2008-1, designating the EU No 930 778, perceive the sign as a misspelling Xtraordinario, § 11-12 for goods in Class 33 (tequila) of a word meaning ‘remarkable’, ‘special’, ‘outstanding’, ‘superb’ or ‘wonderful’, and as such, attribute a descriptive meaning to the sign.

text: Sign Reasoning Case No

text: This word is an invented word, not existing in any known dictionary, and it was not shown that this word is a common

text: misspelling used in the trade EUTM No 1 419 415 covering 04/02/2002, R 9/2001-1, LINQ, circles of interest to the appellant. goods and services in Classes 9 § 13 Additionally, because the word is and 38 short, the ending letter ‘Q’ will be noticed as a peculiar element, and thus the fanciful spelling is obvious

text: Sign Reasoning Case No

text: In this word mark, the combination ‘QI’ is highly uncommon in the English language, as the letter ‘Q’ is normally followed by a ‘U’. The striking misspelling of the LIQID word ‘liquid’ would allow even a EUTM No 5 330 832 initially consumer in a hurry to notice the 22/02/2008, R 1769/2007-2, covering goods in Classes 3, 5 peculiarity of the word ‘LIQID’. LIQID, § 25 and 32 Furthermore, the spelling would not only have an effect on the visual impression produced by the sign, but also the aural impression, as the sign applied for will be pronounced differently from the word ‘liquid’.

text: Sign Reasoning Case No

text: The Court considered that the services in Class 41 could all directly relate to golf sports, and in particular to the organisation and planning 20/11/2018, ST ANDREWS of golf events, competitions, conferences,

text: , ST Classes 25, 28, 35 and congresses, seminars, exhibitions and training, ANDREWS, 41 including club services and publications related to the aforesaid, that is to the particular field for EU:T:2018:811 which the town of St Andrews was well known. (para. 35).

text: Karelia is a region situated in Finland with historic ties to Sweden. In order to come to the finding that the mark applied for will be perceived by the relevant public as describing the geographical origin of the relevant goods, the Board of Appeal took into account the considerable reputation of the Karelia region for the production of biomass and 06/10/2017, KARELIA biofuels and the awareness that the public has of the importance of that industry and of bioenergy

text: , KARELIA, Classes 4 and 10 production in Finland and, more specifically, in EU:T:2017:702 the Karelia region. Consequently, the Board of Appeal was entitled, taking into account the characteristics of that region and the awareness that the relevant public has of it, to find that the word ‘karelia’ referred to a place that currently has a connection with the relevant goods in the mind of the relevant public, at the very least as regards the Finnish public (para. 31).

text: Sign Reasoning Case No

text: Miami is a large city attracting a large number of tourists (para 24). Unlike indications of a country of production, it is unusual to refer to a city as a place of production for clothing. The consumer knows that clothing can be produced in any number of places, including under the same mark, and indeed not necessarily at the place where the trade mark proprietor is based, but mostly in lowwage countries. Where production takes place within the EU, it is the country concerned that is normally indicated and not a particular city. As MIAMI the contested decision correctly points out, this 08/06/2018, Class 25: Track pants, would only be different in the case of cities that R 2528/2017-4, MIAMI

text: the consumer currently associates with fashion, or at least as locations for fashion design, such as Paris. This too would have to be proven, because fashion design is also generally possible anywhere in the world (para 27). Furthermore, there are no apparent reasons as to why consumers in the EU would associate the city of Miami, of all places, with tracksuits. There is no particular relationship between the geographical or climatic characteristics of the city of Miami or of the US State of Florida (including its beaches) and the nature of tracksuits.

text: Sign Reasoning Case No

text: The Board recognised that the mere existence

text: of whisky production in Brazil was not sufficient BRASIL in itself to presume that the relevant consumer

text: Class 32: Beers; Mineral and of whisky will associate the sign with the goods.

text: aerated waters and other However, it had to be assessed whether it was

text: non-alcoholic beverages; reasonable to assume that such an association 06/02/2014, Fruit beverages and fruit might be established in the future. The BoA R 434/2013-1, juices; Syrups and other assessed a number of factors, including the Brasil preparations for making fact that it is current practice in trade to

text: beverages. indicate the geographical origin of whiskies and

text: whisky-based beverages. It concluded that the Class 33: Whisky; whiskydesignation ‘Brasil’ would be understood as based beverages. an informative indication for whisky and whisky-

text: based beverages (para. 29).

text: The Court considered that the Grand Board of SUEDTIROL Appeal was correct to find that services such as

text: Class 35: Business those designated by the contested mark are in

text: management; business principle offered in every region of a certain level

text: administration; office of economic importance (para. 41).

text: functions. In addition, it is true that the relevant public might Class 39: Packaging and take the contested mark as a reference to a 20/07/2016, storage of goods. specific quality of the services in question, for

text: , example, to the fact that the services are tailored Class 42: Scientific and SUEDTIROL, to the particular requirements of businesses technological services and EU:T:2016:422 operating in that region, characterised by a

text: research and design relating

text: particular political, administrative and linguistic

text: thereto; industrial analysis

text: context. Thus, the use of a geographical

text: and research; design and

text: indication of origin is likely to convey to those

text: development of computer

text: concerned a positive idea or image of a particular

text: hardware and software; legal

text: quality of those services, within the meaning of services. the case-law (para. 42).

text: The sign ‘VIRO’ is perceived by the relevant

text: Finnish-speaking consumers as the name of

text: Estonia. It therefore designates, in the perception 28/03/2017, VIRO of the relevant public, a geographical place, R 2312/2016-1, Classes 9 and 11 which was already known to this public due to its Viro

text: size, economic significance and cultural tradition

text: long before the filing of the mark (para. 24).

text: Sign Reasoning Case No

text: It is a well-known fact that Australia is a strong economic nation with a thriving economy, which has grown steadily for more than a quarter of a century. Due to its size, its political and economic importance and its popularity as a holiday destination, Australia has a strong reputation in the EU and its Member States (para. 21). First, with regard to all the goods and services for which protection is sought, the contested trade mark is understood as a reference to a positive image, namely a particular attitude AUSTRALIA 06/04/2018, towards life. Australia is widely associated with Classes 12, 25, 28, 35 and a sense of freedom, wide open spaces and a R 2207/2017-2, 37 connection with nature, of which the Australian AUSTRALIA Outback is representative. Consequently, it is likely that the geographical name ‘AUSTRALIA’ will influence consumers in the choice of their goods and services, as they associate the goods and services thus marked with this particular attitude to life, which triggers a positive reaction (06/02/2014, R 434/2013-1, BRASIL, § 32). The sign applied for is descriptive, as it indicates that the use or take-up of the goods and services in question contributes to creating a particular attitude to life linked to Australia (para. 26).

text: The Court found that the word ‘monaco’ corresponded to the name of a principality known throughout the world, not least because of the renown of its royal family and its organisation of a Formula 1 Grand Prix and a circus festival. The 15/01/2015, Court considered that the trade mark MONACO

text: , MONACO had to be refused for goods and services in MONACO, Classes 9, 16, 39, 41 and 43 as the word EU:T:2015:16 ‘monaco’ could be used, in trade, to designate origin, geographical destination or the place of supply of services. The trade mark was thus descriptive for the goods and services concerned.

text: Sign Reasoning Case No

text: The Court held that BoA did not need to go into a detailed assessment of the association between 15/12/2011, the sign and each of the goods and services. It

text: , Passionately Swiss based its finding on Switzerland’s reputation for Passionately quality, exclusiveness and comfort, which can be Swiss, associated with the services in Classes 35, 41, 43 EU:T:2011:753 and 44 and the goods in Class 16 (para. 45).

text: BoA established that ‘PARIS’ is likely to be associated with a certain idea of quality, design, stylishness and even of being avant-garde. This 26/10/2015, PARIS results in a positive feeling, an expectation with R 3265/2014-4, regard to the quality of the goods sold and the Paris services provided, when ‘PARIS’ is put forward as an indication of geographical origin or destination.

text: Article 7(1)

text: (c) EUTMR) sport of skiing. While Class 16 (books) is a prime example of a category of goods that contains subject matter or content, an objection made under this section may occur also with respect to other goods and services, such as DVDs (a term that includes not only blank DVDs but also recorded DVDs) or editorial services. With regard to this section, the terms ‘subject matter’ and ‘content’ are used interchangeably. Names of famous persons (in particular musicians or composers) can indicate the category of goods, if due to widespread use, time lapse, date of death, popularisation, recognition, multiple performers or musical training, the public can understand them as generic. This would be the case, for example, with respect to ‘Vivaldi’, whose music is played by orchestras all over the world and the sign ‘Vivaldi’ will not be understood as an indicator of origin for music. With regard specifically to famous titles of books, see below 2.7.2 titles of books. In the event of services, where a sign consists of a term indicating a certain industry, such as ‘CLOTHING’ or ‘CARS’, and it can be reasonably assumed that a services provider (e.g. in the field of advertising or retail services) could specialise to meet the characteristics of that particular industry, an objection to subject matter should be raised. Objections based on the above: will apply only to goods (e.g. books) or services (e.g. education) that contain subject

text: Article 7(1)

text: (c) EUTMR) — ANIMALS for photographs — TRANSCENDENTAL MEDITATION for instructional and teaching material. Class 28: Board games

text: Article 7(1)

text: (c) EUTMR. For single letters under

text: Article 7(1)

text: (b) EUTMR, see the Guidelines, Part B, Examination, Section 4, Absolute Grounds for Refusal, Chapter 3, Non-Distinctive Trade Marks (

text: Article 7(1)

text: (b) EUTMR), paragraph 5.

text: Sign Reasoning Case No

text: The sole fact that the goods claimed can be offered in red does not mean that ‘RED’ is understood as descriptive by the consumer. Colours play no role as product characteristics in the sector of the goods in question (i.e. common metals and their alloys (Class 6) or rubber,

text: asbestos, mica and goods made

text: of these materials (Class 17)). Decision of the Fourth Board of But even if goods like cables, EUTM No 14 654 842 Appeal of 7 November 2019, R wires, machines, tools, weapons, 1246/2019‑4, § 14 registered for goods in Classes razors, household appliances, 6-9, 11,17 and 19 pipes, etc. may have a colour, this colour does not describe an essential characteristic of those goods. Therefore, the use of the indication ‘RED’ in connection with the goods claimed does not lead to the conclusion that the targeted consumers will automatically perceive the sign as a descriptive characteristic.

text: Sign Reasoning Case No

text: The terms ‘visible’ and ‘white’ allow the relevant public to detect immediately and without further reflection the description of a fundamental characteristic VISIBLE WHITE of toothpaste andmouthwash, EUTM No 802 793 in the sense that their use 09/12/2008,

text: , Visible Rejected for toothpaste and makes the white colour of teeth White), EU:T:2008:553,§ 42, 43. mouthwash visible. ‘Visible white’ describes an intrinsic characteristic that is inherent to the nature of the goods concerned, namely the reason to use them or their intended purpose.

text: The term ‘truewhite’, applied to light-emitting diodes (LED) merely described an essential characteristic of those goods, TRUEWHITE namely their ability to reproduce EUTM No 8 272 321 07/07/2011,

text: , light of such whiteness that could TRUEWHITE, EU:T:2011:340, § Rejected be considered to be similar to 23 natural light. In that case, the for light emitting diodes (LED). term ‘true white’ also described an intrinsic characteristic inherent to the nature of the goods concerned, namely their quality.

text: Sign EUTM No

text: BANK OF ENGLAND Classes 6,8,9,14,16,18,21,28,30,35,36,41, 11 157 641 42, 45

text: Sign EUTM No

text: DIARIO DE LAS PROVINCIAS DE VALENCIA 54 619 Classes 16, 35

text: Sign EUTM No

text: AEROPORT TOULOUSE-BLAGNAC 13 952 346 Classes 16,35,36,37,38,39,41,42,43,45

text: Sign Reasoning EUTM No

text: The sign as a whole merely indicates that the goods and CHARITY BANK services are provided by a bank 4 454 872 Classes 9, 35 and 36 that focuses on charity more than other banks that may also support charity activities.

text: Sign Reasoning EUTM No

text: The expression taken as a whole immediately informs consumers without further reflection that the services applied for European PrivateTrust BANK are insurances, financial and 11 585 908 Class 36 monetary services, etc., that are rendered by a European nonpublic trust bank that is organised to perform the fiduciary of trusts and agencies.

text: Sign Reasoning EUTM No

text: The relevant consumer will not see the sign as something unusual but rather JOURNAL OF OPTOMETRY as a meaningful expression: a 6 646 996 Classes 16 and 41 publication related to the world of optometry with its technological projection and the knowledge of the mentioned science.

text: HEALTH JOURNAL The consumers will see the sign 1 524 396 Classes 16 and 38 as an indication of the good itself.

text: Sign Reasoning EUTM No

text: The expression is not the official denomination of the main airport next to the city of Alicante. The expression ‘alicante-airport’ immediately informs consumers without further reflection that

text: the services applied for are 15 140 676 Class 35 from an airport in the city or province of Alicante. Therefore, the mark conveys obvious and direct information regarding the geographical origin of rendering of the services in question.

text: Sign Case No

text: , Hund, EU:T:2010:295

text: , Pferd, EU:T:2010:296

text: Sign Case No

text: , DEVICE OF A BODY BUILDER (fig.), EU:T:2016:579

text: Classes 5, 25 and 35

text: Sign EUTM No Goods and services

text: Classes 1, 3, 5, 6, 7, 8, 9, 11, 16, 844 17, 18, 19, 20, 21, 22, 26, 28, 31, 41, 42

text: Sign EUTM No Goods and services

text: 384 653 Classes 33, 35 and 39

text: , ¡Que buenu ye! Hijoputa, EU:T:2012:120) The application was rejected since ‘Hijoputa’ is an offensive and vulgar word in Spanish. The application was considered to be against accepted principles of morality (irrespectively of the figurative elements of the sign) protected under

text: Article 7(1)

text: (f) EUTMR.

text: Sign EUTM No Goods and services

text: 402 781 Class 33

text: The application was refused on the basis of

text: Article 7(1)

text: (j) EUTMR, because it contains the protected geographical indication for wines ‘MOLINA’ (protected under the Agreement establishing an association between the European Union and its Member States, of the one part, and the Republic of Chile, of the other part). The distinctive figurative elements of the sign are irrelevant.

text: See Common Communication on the Common Practice of Distinctiveness — Figurative Marks containing descriptive/non-distinctive words, available at: https://www.tmdn.org/network/documents/ 10181/278891cf-6e4a-41ad-b8d8-1e0795c47cb1

text: Sign Example

text: CP3 example

text: CP3 example

text: CP3 example

text: CP3 example

text: CP3 example

text: CP3 example

text: Sign Case No Goods and services

text: 07/05/2008 Classes 1,3,7,17,22,37 R 655/2007-1

text: Classes 12,18,25 EU:T:2010:212

text: EUTM No 5 225 156 Classes 29, 30

text: Sign Example

text: CP3 example

text: CP3 example

text: CP3 example

text: Sign Case No Goods and services

text: EUTM No 13 448 097 Classes 5,9,11,37,42,45

text: CP3 examples

text: Sign Case No Goods and services

text: EUTM No 7 147 689 Classes 9, 38

text: , Watt, Classes 35,39,42 EU:T:2014:1022

text: , WORLD Classes 9, 28, 41 OF BINGO, EU:T:2015:914

text: 25/01/2019, Decision of the Grand Board of Appeal R Classes 9, 36, 42 1801/2017-G

text: CP3 examples

text: Sign Case No Goods and services

text: , BioID, Classes 9,38,42 EU:T:2002:300

text: 01/02/2016, Classes 3,4,14,16,18,20,21,25,30 R 1451/2015-4 ,32,33

text: CP3 examples

text: Sign Case No Goods and services

text: , Notfall Classes 3, 5 Creme, EU:T:2014:941

text: , Natural Class 3 beauty, EU:T:2012:362

text: CP3 examples

text: Sign EUTM No Goods and services

text: 971 153 Classes 9, 16 and 35

text: Article 7(1)

text: (c) EUTMR) parallelograms, pentagons, hexagons, trapezia and ellipses are unlikely to be acceptable, in particular when the abovementioned shapes are used as a frame or border.

text: CP3 examples

text: Sign Case No Goods and services

text: , Gifflar, Class 30 EU:T:2014:620

text: EUTM No 6 039 119 Class 24

text: EUTM No 11 387 941 Classes 9,35,41

text: CP3 examples

text: Sign EUTM No Goods and services

text: 899 455 Class 35

text: CP3 examples

text: Sign Case No Goods and services

text: EUTM No 11 418 605 Classes 21, 24, 35 21/05/2015,

text: , Splendid, Classes 18, 25 EU:T:2015:301

text: CP3 example

text: Sign EUTM No Goods and services

text: 244 942 Classes 11, 37

text: 186 364 Classes 35, 41, 45

text: 906 458 Classes 12, 39

text: CP3 examples

text: Sign Case number Goods and services

text: 29/07/2016, R 2194/2015‑5 Classes 32,33,43

text: , STONE (fig.), EU:T:2016:325 There is a clear link between the graphic representation of the mark applied for and the meaning Classes 8, 21 of the word ‘stone’. The descriptive character of the mark applied for in relation to the goods at issue is not mitigated by their graphic representation (paras 90-91).

text: Sign Example

text: CP3 example CP3 example

text: CP3 example

text: Sign EUTM No Goods and services

text: 909 307 Classes 18, 21, 28, 31 1 131 046 Classes 36, 42, 45

text: 778 Classes 9, 11

text: 512 784 Classes 11, 28, 37, 42

text: 584 262 Classes 9, 42

text: CP3 example

text: Sign Case No Goods and services

text: EUTM No 13 847 827 Classes 5, 31 EUTM No 13 433 784 Classes 37,41,42 11/02/2015, Class 11 R 1983/2014-2 EUTM No 13 893 871 Classes 29, 31

text: CP3 examples

text: Sign Case No Goods and services

text: EUTM No 116 434 Class 32 03/07/2003,

text: , Best Buy, Classes 35, 37, 42 EU:T:2003:183

text: IR No W 01 116 291 Classes 29, 30, 43

text: 11/12/2015, Classes 16, 29, 30, 35 R 1191/2015-5

text: Sign Case No Goods and services

text: , Classes 7, 8, 35 DUALSAW, EU:T:2015:932

text: , Extra, Classes 3, 21, 30 EU:T:2015:462

text: Sign EUTM No Goods and services

text: 815 121 Classes 16, 21, 30

text: 585 939 Classes 29, 30, 32

text: R 1551/2017-4 Classes 3,5,18,28,31,35,38

text: Mark Goods and services Reasoning

text: Sound of a barking dog Class 31: Foodstuffs and fodder The link between the sound and

text: for animals the goods applied for can easily

text: CP11 example

text: be made and therefore the sound

text: mark is considered descriptive of

text: the claimed goods.

text: Mark Goods and services Reasoning

text: CP11 example Class 31: Fresh bananas The movement does not add

text: distinctiveness to the descriptive

text: verbal element.

text: Not considered descriptive

text: Mark Multimedia mark Multimedia mark

text: CP11 example Class 29: Tinned sardines The multimedia mark is not

text: considered descriptive of the

text: kind of goods as, although the

text: depiction of the sardine is banal,

text: it is flying in space, and thus as

text: a whole it differs significantly from

text: a true-to-life representation of the

text: goods applied for.

text: Sign Reasoning Case No

text: ‘This device is identical to the international safety symbol known as “high voltage symbol” or “caution, risk of electric shock” ... It has been officially defined as such by the ISO 3864 as the standard high voltage symbol, whereby the device applied for is contained within the triangle R 2124/2011-5 which denotes that it is a hazard symbol ... Consequently, since EUTM No 9 894 528covering it essentially coincides with the goods in Class 9 customary international sign to indicate a risk of high voltage, the Board deems it to be ineligible for registration as an EUTM in accordance with

text: Article 7(1)

text: (d) EUTMR’ (para. 20)

text: Section 4 Absolute grounds for refusal — Chapter 6 Shapes or other characteristics that result from the nature of the goods, are necessary to obtain a technical result or give substantial value to the goods (

text: Article 7(1)

text: (e) EUTMR)

text: Article 7(1)

text: (e) EUTMR)

text: Article 7(1)

text: (e) EUTMR)

text: Article 7(1)

text: (e) EUTMR)

text: Article 7(1)

text: (e) EUTMR)

text: Article 7(1)

text: (e) EUTMR)

text: Sound mark (chainsaw) Class 7: Chainsaws This sound results from the nature of the goods applied LINK for; therefore it would be rejected based on

text: Article 7(1)

text: (e) (i) EUTMR. Multimedia mark Class 9: Metronomes The sound and movement are a result of the nature of the goods themselves; therefore the mark would be rejected based on

text: Article 7(1)

text: (e)(i) EUTMR.

text: Article 7(1)

text: (e) EUTMR)

text: Sound (clapping) Class 9: Audio-sensitive controls This sound mark consists for lighting apparatus exclusively of the sound that is LINK necessary to obtain a technical result and thus cannot constitute a trade mark. Motion mark (thermostat) Class 9: Thermostats The movement of the goods applied for is necessary to obtain a technical result; therefore it would be rejected based on

text: Article 7(1)

text: (e)(ii) EUTMR.

text: Figure 3:

text: Article 7(1)

text: (e) EUTMR)

text: Article 7(1)

text: (e) EUTMR)

text: Sign Case No Goods and services

text: Article 7(1)

text: (e) EUTMR)

text: EUTM No 107 029 10/07/2006, R 856/2004 G Class 28 12/11/2008,

text: (construction toys) 14/09/2010,

text: P The Grand Board held that the various features of a Lego brick all performed … particular technical functions, namely: the bosses [studs]: height and diameter for clutch power; number for fixing versatility; layout for fixing arrangement; the secondary projections: clutch-power; the number for best clutch-power in all positions; the thickness of the wall to act as a spring; sides: connected with sides of other bricks to produce a wall; hollow skirt: to mesh with the bosses and to enable fixing for clutch power; and overall shape: brick shape for building; size for children to hold (10/07/2006, R 856/2004‑G, 3D SHAPE OF LEGO BRICK, § 54). The General Court confirmed the Grand Board’s findings, holding that the latter had applied

text: Article 7(1)

text: (e)(ii) EUTMR correctly (12/11/2008,

text: , Lego brick, EU:T:2008:483). The Court of Justice confirmed the General Court’s judgment, holding that … the solution incorporated in the shape of goods examined is the technically preferable solution for the category of goods concerned. If the three-dimensional sign consisting of such a shape were registered as a trade mark, it would be difficult for the competitors of the proprietor of that mark to place on the market shapes of goods constituting a real alternative, that is to say, shapes which are not similar and which are nevertheless attractive to the consumer from a functional perspective (14/09/2010,

text: P, Lego brick, EU:C:2010:516, § 60).

text: Sign Case No

text: Article 7(1)

text: (e) EUTMR)

text: Identification of the essential characteristics In this case, the shape applied for was described as ... a slightly curved knife handle characterised by a small angle of 5 to 10 degrees between the knife blade and the longitudinal axis of the shell grip, which has a middle section with a somewhat rounded outer cross section, which broadens towards a tapered rear end. The handle also incorporates a knurled screw in the shell of the knife (19/09/2012,

text: , Knife handles, EU:T:2012:443, § 28). 2. Assessment of technical function of those characteristics The Court stated that As is apparent from that patent [relied on by the invalidity applicant], the technical effect of the angle between the knife blade and the longitudinal axis of the mother-of-pearl handle is to facilitate cutting. The intermediate section is of particular importance for long cuts. It makes the cut more precise while allowing greater pressure to be exerted. Finally, the knurled screw allows the shell to be opened and the blades of the knife to be changed without using other tools and without hindering manipulation of the knife during use (19/09/2012,

text: , Knife handles, EU:T:2012:443, § 30). It concluded that the most important elements of the sign, constituting its essential characteristics, were all exclusively functional (para. 33), noting that In this case, … the Board of Appeal did state … that the shape of the knife constituting the disputed trade mark could be perceived as being a fish or a dolphin. However, that resemblance with a fish is conditioned by elements having a technical function, namely the invention covered by the expired American patent with a slightly less curved handle and a slight prolongation of the points at the rear end (19/09/2012,

text: , Knife handles, EU:T:2012:443, § 39).

text: Sign Case No Goods and services

text: EUTM No 162 784 24/10/2019,

text: Class 28 (23/04/2020,

text: P, Cubes Three dimensional puzzles (3D), EU:C:2020:286)

text: Article 7(1)

text: (e) EUTMR)

text: Para. 70: ‘… the essential characteristics of the contested mark are limited to the overall cube shape, on the one hand, and to the black lines and little squares on each face of the cube, on the other.’ Para. 86: ‘… those black lines actually represent a physical separation between the different small cubes, allowing a player to rotate each row of small cubes independently of each other in order to gather those small cubes, in the desired colour scheme, on the cube’s six faces. Such a physical separation is necessary to rotate, vertically and horizontally, the different rows of small cubes by means of a mechanism located in the centre of the cube. Without such a physical separation, the cube would be nothing more than a solid block in which none of the individual elements could move independently of the others.’ Para. 96: ‘It is apparent from that judgment on appeal that the fact that the rotating capability of the vertical and horizontal lattices of the ‘Rubik’s Cube’ resulted from a mechanism internal to the cube, that is, an element which was not visible in the graphic representation of the contested mark, did not prevent the Board of Appeal from being able to have regard to that rotating capability in its analysis of the functionality of the essential characteristics of that mark.’ Para. 98: ‘… given that the two characteristics of the contested mark which have been correctly identified as essential by the Board of Appeal, in the present case the overall cube shape, on the one hand, and the black lines and the little squares on each face of the cube, on the other, are necessary to obtain the intended technical result of the actual goods concerned (see paragraphs 85 to 90 above), it must be concluded that that mark falls within the ground referred to in

text: Article 7(1)

text: (e)(ii) of Regulation No 40/94.’

text: Article 7(1)

text: (e) EUTMR)

text: Article 7(1)

text: (e) EUTMR)

text: Sign Case No Goods

text: Apart from loudspeakers, other 10/09/2008, R 497/2005-1, apparatus for the reception, LOUDSPEAKER (3D) processing, reproduction, 06/10/2011,

text: , regulation or distribution of sound Loudspeaker signals in Class 9 as well as music furniture in Class 20.

text: The General Court confirmed the Board of Appeal’s finding that the sign at issue fell within the scope of

text: Article 7(1)

text: (e)(iii) EUTMR (06/10/2011,

text: , Loudspeaker, EU:T:2011:575). The General Court held that for goods such as those listed above, the design was an element that would be very important in the consumer’s choice even if the consumer took other characteristics of the goods at issue into account. After having stated that the shape for which registration was sought revealed a very specific design and that it was an essential element of the applicant’s branding, which increased the appeal of the product and, therefore, its value, the General Court also noted that it was apparent from the evidence on record, namely extracts from the distributors’ websites and online auction or second-hand websites, that the aesthetic characteristics of that shape were emphasised first and that the shape was perceived as a kind of pure, slender, timeless sculpture for music reproduction, which made it an important selling point (06/10/2011,

text: , Loudspeaker, EU:T:2011:575, § 75). The General Court thus concluded that, independently of the other characteristics of the goods at issue, the shape for which registration was sought bestowed substantial value on the goods concerned.

text: EUTM Case No

text: EUTM 10 350 593 29/03/2016, R 590/2015-4, SPEISEEIS

text: Article 7(1)

text: (e) EUTMR)

text: Para 30: an ice-cream does not become ‘more valuable’ as a result of its shape in the sense that the provider could demand a higher price for it. Instead, the ‘value’ of the product is merely that of performing trade mark functions. This has nothing to do with the ‘value of the goods’ that is intended by

text: Article 7(1)

text: (e)(iii) EUTMR. Para 35: if the EUTM proprietor’s website refers to the presentation of ice cream at events that are primarily aimed at designers, the latter do not constitute the relevant public. The relevant public consists of general end consumers. Their perception must be taken as a basis, and the effect that the product at issue would have on the consumer when purchasing an ‘ice cream’ (and not in a design museum) must be examined by way of an a priori decision.

text: EUTM Case No

text: EUTM 12 309 795 BOTTIGLIA ROSA (08/05/2019,

text: , BOTTIGLIA ROSA (3D), EU:T:2019:299)

text: The Court confirmed the finding of the BoA: the shape of the bottle and the reflective golden colour are the essential characteristics of the sign. The shape of the bottle is banal, its design clearly cannot be described as being ‘striking’, ‘particular’ or ‘easily remembered’ and the colour and mirror effect of the surface of the bottle provides no striking or particular design element. Neither of the two essential characteristics of the sign is sufficient, in itself, to give substantial value to the goods. Nor can such substantial value arise from the combination or sum of two characteristics that are neither ‘striking’, nor ‘particular’ nor ‘easily remembered’.

text: Paris Convention for the Protection of Industrial Property of 20 March 1883 (as amended on 28 September 1979).

text: Sign Relevant Public policy/morality Case No

text: BIN LADIN General Morality and public policy — the mark applied 29/09/2004 consumer for will be understood by the general public R 176/2004as the name of the leader of the notorious 2 terrorist organisation Al Qaeda; terrorist crimes are in breach of public order and moral principles (para. 17).

text: CURVE General Morality — ‘Curve’ is an offensive and vulgar word

text: consumer in Romanian (it means ‘whores’). The relevant public is not limited only to the public to which the goods and services covered by the mark are directly addressed. ‘Curve’ equally offends other persons, who are confronted with the sign accidentally without being interested in these goods and services (para. 19). With regard to the word ‘Curve’+ additions [‘AIRCURVE’], see example below in this paragraph (R 203/2014-2).

text: General Morality — ‘fucking’ is an offensive and vulgar word R 168/2011-1 consumer in English.

text: General Morality — ‘HIJOPUTA’ is an offensive and vulgar

text: consumer word in Spanish.

text: General Morality — the Hungarian Criminal Code bans

text: consumer certain ‘symbols of despotism’, including the hammer and sickle as well as the five-pointed red star symbolising the former USSR. This law is not applicable by reason of its normative value but rather as evidence of the perception of the relevant 20 public (paras 59-63) ( ).

text: PAKI General Morality — ‘PAKI’ is a racist insult in English.

text: consumer

text: SCREW YOU General Morality — a substantial proportion of ordinary R 495/2005consumer citizens in Britain and Ireland would find the G (for goods words ‘SCREW YOU’ offensive and objectionable other than (para. 26). sex products)

text: FICKEN General Morality — ‘FICKEN’ is an offensive and vulgar 14/11/2013, consumer word in German (it means ‘fuck’).

text: , EU:T:2013:5 96

text: ATATURK Average Morality — banal use of signs with a highly positive R 2613/2011consumer in connotation can be offensive under

text: Article 7(1)

text: (f) 2 the EU EUTMR. ‘ATATURK’ is a national symbol of spiritual general and political value for the European general public public of of Turkish origin. Turkish origin

text: FUCK CANCER General Morality — the word ‘FUCK’ is not only a ‘slightly 23/02/2015, consumer rude word’ in combination with the word ‘CANCER’, R 793/2014but offensive and indecent, at least for the English- 2 speaking part of the trade circles (para. 19).

text: The Hungarian Criminal Code, in force at the time of the judgment (20/09/2011), has been amended by Act C of 2012 to now encompass ‘Use of Symbols of Totalitarianism’, used ‘specifically in a way to offend the dignity of victims of totalitarian regimes and their right to sanctity’ (formerly Section 269/B, now Section 335 of the Hungarian Criminal Code).

text: MECHANICAL General Public policy — ‘APARTHEID’ refers to an offensive 06/02/2015, APARTHEID consumer former political regime in South Africa that included R 2804/2014 state terror, torture and the denial of human dignity. -5 The message conveyed by the sign for computer games, related publications and entertainment is contrary to the European Union’s public policy, since it contradicts the indivisible, universal values on which the EU is founded, i.e. human dignity, freedom, physical integrity, equality and solidarity, and the principles of democracy and the rule of law (para. 30).

text: MH17 General Morality — acronyms of the flights. The intent EUTM consumer to seek financial gain from what is universally 13 092 937 MH370 accepted to be a tragic event that has resulted in EUTM the loss of many hundreds of lives, is unacceptable 12 839 486 and contrary to accepted principles of morality.

text: General Public policy and morality — mafia-type organised 15/03/2018, consumer crime is a clear and present threat to the whole of

text: , the EU. EU:T:2018:1 ‘la Mafia’ is understood world-wide as referring 46 to a criminal organisation originating in Italy, whose activities extend to States other than the Italian Republic, inter alia, within the European Union. The referred criminal organisation resorts to intimidation, physical violence and murder in carrying out its activities, which include, inter alia, drug trafficking, arms trafficking, money laundering and corruption (para. 35). Such criminal activities breach the very values on which the European Union is founded, in particular the values of respect for human dignity and freedom as laid down in

text: Article 2

text: , Treaty of the European Union and Articles 2, 3 and 6 of the Charter of Fundamental Rights of the European Union (para. 36). The association in the mark of the word element ‘la mafia’ with the other elements of the contested mark is such to convey a globally positive image of the Mafia’s activities and, so doing, to trivialise the perception of the criminal activities of that organisation (para. 46). (…) The contested mark is, therefore, likely to shock or offend not only the victims of that criminal organisation and their families, but also any person who, on EU territory, encounters that mark and has average sensitivity and tolerance thresholds (para. 47).

text: ETA General Public policy and morality — ‘ETA’ will be 27/06/2016, consumer immediately understood in Europe, in particular R 563/2016in Spain, as designating the terrorist group ETA 2 (para. 2). ETA is included on the list of individuals and groups facilitating, attempting to commit or committing terrorist acts in EU territory (Council Common Position 2001/931/CFSP of 27/12/2001 on the application of specific measures to combat terrorism updated by Council Common Position 2009/468/CFSP) (para. 14). In a commercial context, the term ‘ETA’ has the inherent tendency to shock any normal person who hears or reads it and, in particular, members of the Spanish public who particularly keep that name in mind. The fact that ETA is not currently considered to be the biggest threat facing Spain according to an extract from a survey conducted in June 2015 provided by the applicant, does not mean that the term will not continue to be associated with the terrorist group in question in the mind of the public (para. 15).

text: General Public policy and morality — the words ‘KRITIKAL 27/10/2016, consumer BILBO’ identify a variety of plant of the ‘cannabis’ R 1881/2015 genus — also called ‘marihuana’ — which, due -1 to its high content of tetrahydrocannabinol (THC), namely 21.47 %, is used to make marihuana (para 19). Cannabis with a high THC content is considered to be a narcotic that is prohibited in a large number of Member States (19/11/2009,

text: , Cannabis, EU:T:2009:448). Non-psychoactive substances are legal and the authorities can issue licences for their cultivation for those purposes. However, due to its high THC content, in this case the product concerned is not non-psychoactive, but is a substance for smoking that is strictly controlled in almost all European Union countries (para. 22).

text: General Morality — the sign, containing the term ‘weed’ and EUTM consumer applied for in Class 32, will be understood by the 16 961 732 relevant consumer as glorifying the use of a drug (cannabis/marijuana) that is prohibited by law in many European countries.

text: IBIZASKUNK General Morality — applied for in Classes 5, 31 and 35. EUTM consumer The sign, contains the term ‘skunk’ which refers 18 097 102 to a cannabis strain with high THC. It will be perceived as a motivational/promotional message, which encourages an activity prohibited in many Member States of the EU, namely the consumption or sale of products containing SKUNK, as well as a banalisation of the aforementioned narcotic substance. The term IBIZA (known as a party location) reinforces the recreational message. General The sign depicts cannabis leaves and also contains EUTM consumer the term ‘cannabis’. The application was filed for 16 176 968 goods in Classes 30 and 32 and for services 12/12/2019, in Class 43. The Court considered that the fact

text: , that the sign would be perceived by the relevant public as an indication that the food and drink EU:T: items contained narcotic substances, prohibited in 2019:855 many Member States, was sufficient to justify the refusal of the mark. It was not required that a sign encourage or trivialise the use of an illegal narcotic substance. As regards factors such as the accuracy of the depiction or the intention of the applicant to use the sign only for legal goods, the Court pointed out that the perception of the public was decisive and clarified that the intentions of the applicant did not play a role in the assessment.

text: Sign Relevant Consumer Comment Case No

text: KURO General consumer That a foreign R 482/2012-1 term, name or abbreviation displays certain similarities with an offensive word (like ‘kúró’) is not in itself sufficient reason to refuse an EUTM application (para. 20). The Hungarian vowels ‘ò’ and ‘ù’ are clearly different from the unaccented vowels ‘o’ and ‘u’. Furthermore, Hungarian words never end with an unaccented ‘o’ (paras 15-18).

text: SCREW YOU General consumer (for A person entering a R 495/2005-G sex products) sex shop is unlikely to be offended by a trade mark containing crude, sexually charged language (para. 29).

text: DE PUTA MADRE General consumer Although ‘puta’ means EUTM 3 798 469 ‘whore’ in Spanish, the EUTM 4 781 662 expression ‘DE PUTA EUTM 5 028 477 MADRE’ means ‘very good’ in Spanish (slang).

text: AIRCURVE Specialised public The objectionable word 04/06/2014, (medical personnel; ‘Curve’ [‘whore’, ‘slut’ in R 203/2014-2 patients with breathing Romanian] is seamlessly disorders) attached to the English word ‘AIR’ to form ‘AIRCURVE’, which, as a whole, is entirely fanciful in Romanian. Even if the relevant public understood the English word ‘AIR’, and analysed the mark by separating it into two elements, the meaning of ‘AIRCURVE’ would be ‘air whores’, which, as a concept, and for respiratory apparatus, is sufficiently nonsensical or puzzling to the extent that it would eclipse any notion of being offensive (para. 13 et seq.). With regard to the word ‘Curve’ on its own, see the abovementioned example in this paragraph (

text: General consumer For the goods at issue 07/05/2015, — rum (Class 33) R 2822/2014-5 — the relevant public will perceive the sign as provocative, transgressive, rebellious, but not as an indicator of criminal origin of the goods (para. 23).

text: ILLICIT General consumer The mark is considered EUTM 13 469 523 acceptable under

text: Article 7(1)

text: (f) EUTMR, as ‘illicit’ is different from something like ‘counterfeit’. The mark would be seen as fanciful on the goods (cosmetics, and perfumes) and it could be accepted.

text: General consumer The mark evokes a 29/11/2018 concept that falls within R 1516/2018-5 the domain of vulgarity and profanity. However, the effect is attenuated by the fact that the implicit word does not appear in the mark as such. The presence of the initial figurative element ʽWʼ, combined with the euphemistic presentation of ‘F___’, also suppresses the offensive potential of the sign. Consumers with a normal level of sensitivity and tolerance would not be offended or upset by regular commercial exposure to the term in connection with the relevant goods and services in Classes 16, 18, 25, 35, 41, 43 and 44 (para. 31).

text: General consumer The sign, containing the EUTM 18 000 042 terms ‘hemptouch’ and ‘cannabis’, is applied for in Classes 3 and 5. It will be perceived by the relevant consumer as a reference to the medicinal use of the substance. Hemp is a variety of Cannabis sativa, which contains a very low concentration of THC, and cannabis can be used for medicinal purposes.

text: See in particular 26/11/1996,

text: , Graffione [1996] ECR I‑6039, § 24; 04/03/1999,

text: , Cambozola, EU:C:1999:115, § 41-43; 30/03/2006,

text: , Elizabeth Emanuel, EU:C:2006:215; § 47; 08/06/2017,

text: , Gözze / VVB (Cotton Flower), EU:C:2017:434, § 54-57. The GC provided further elaboration on the test at 27/10/2016,

text: , CAFFÈ NERO, EU:T:2016:635, § 45 and

text: , CAFFÈ NERO (fig.), EU:T:2016:634. 22 As opposed to ‘CAFFÈ’, the term ‘COFFEE’ (in English) only refers to the beverage. The mark ‘RALPH’S COFFEE’ would be perceived by English speakers as referring only to the beverage (‘coffee’), together with the first name ‘Ralph’, whereas the expression ‘RALPH’S CAFE ’ would be perceived as an establishment selling beverages and meals (16/08/2019, R 883/2019‑2 , Ralph’s coffee, § 15).

text: EUTM No Descriptive element Goods applied for in Reasoning

text: Class 30

text: 200 410 Coffee Coffee; sugar; mustard; The term COFFEE vinegar; malt biscuits; HOUSE in the sign foodstuffs made from refers to a particular cereals; preparations establishment in which made from cereals; coffee and other salts, seasonings, beverages would be flavourings and provided ; the sign condiments; rice; would therefore not sago; herbal infusions; be seen as deceptive prepared coffee for goods such as beverages. herbal infusions which consumers would expect to be available in such an establishment.

text: 536 976 Coffee Inter alia , coffee; The term coffee n’ bites decaffeinated coffee; in the mark shows that artificial coffee; coffee will not be the coffee concentrates; only product protected coffee extracts; iced by the mark. The mark coffee; chicory [coffee gives the impression of substitute]; sugar-coated a place serving various coffee beans; coffee, things. It can therefore teas and cocoa and be accepted for goods substitutes thereof. that are not coffee, such as artificial coffee and

text: teas and cocoa and

text: substitutes thereof .

text: 229 978 Coffee Inter alia, coffee; tea; A consumer would not cocoa; artificial coffee; expect a mark that rice; tapioca and sago; combined the element flour and preparations ‘COFFEE’ with the made from cereals; elements ‘SWEET’ and edible ices; sugar; ‘SNACK’ to only offer honey; golden syrup; coffee.

text: seasonings; ice [frozen

text: water]; chocolate; coffee-based beverages;

text: chocolate and tea-based

text: beverages; chocolate-

text: coated nuts; drinking

text: chocolate; cocoa-based

text: beverages; coffee

text: flavourings; coffee

text: beverages with milk; coffee-based beverages.

text: 594 185 Tea Coffee, teas and cocoa The allusion to longevity and substitutes thereof. with the misspelling

text: Longevitea creates a unit which

text: should not be

text: dissected . The letters -tea at the end are therefore not deceptive for goods which are not tea .

text: Section 4 Absolute grounds for refusal — Chapter 8 Deceptive trade marks (

text: Article 7(1)

text: (g) EUTMR) the ‘deceptive’ element is either visually highlighted or separated from the other

text: Class 30

text: 159 174 Coffee Inter alia, coffee, tea, The element cocoa and artificial ‘FLAVORED COFFEE’ coffee; coffee substitutes is separated from the (cereal or chicory other elements in the based); beverages sign. The decorative based on coffee, cocoa, brown and beige chocolate or tea. ribbon , which contains the words ‘FLAVORED COFFEE’, visually highlights the verbal element. Therefore, the sign is likely to deceive the relevant public in relation to:

text: artificial tea, cocoa

text: and coffee; Coffee

text: substitutes (based on

text: cereals or chicory);

text: beverages based on

text: cocoa, chocolate or tea. A limitation was made to exclude: artificial tea,

text: cocoa and coffee; coffee

text: substitutes (based on

text: cereals or chicory);

text: beverages based on

text: cocoa, chocolate or tea. Registered for

text: Coffee; coffee-based

text: beverages .

text: 093 546 Coffee Inter alia coffee, The element ‘COFFEE’ teas and cocoa and is clearly visually substitutes thereof. separated from the other elements in the sign. Therefore, the sign is likely to deceive with respect to tea and

text: cocoa and substitute

text: thereof since these goods neither are nor contain coffee. Registered for: coffee; partially refused for:

text: teas and cocoa and

text: substitutes thereof .

text: Sign and goods Reasoning Case No

text: These examples only address the issue of whether an objection based on deception should be raised or not. This paragraph does not deal with possible objections under other absolute grounds for refusal. Therefore, the possibility that a given trade mark might appear to be prima facie objectionable under

text: Article 7(1)

text: (b) and/or (c) EUTMR (or any other provisions) is not contemplated here.

text: LACTOFREE The nature of the sign would 19/11/2009,

text: immediately lead the relevant For lactose in Class 5. R 892/2009‑1 consumer to believe that the

text: product in question, that is,

text: ‘lactose’, does not contain any lactose. It is clear that if the

text: product being marketed under the

text: sign ‘LACTOFREE’ were actually

text: lactose itself, then the mark

text: would be clearly misleading.

text: FLEXSTEEL ( ) Insofar as the public targeted will 09/12/2016,

text: understand the sign literally as a For pipes, tubes and hoses, R 1360/2016‑4 descriptive indication, namely that

text: and fittings therefor, including

text: the goods thus identified consist

text: valves, of metal; flexible tubes of

text: of steel or at least contain a

text: metal; metal hose clamps; hose

text: substantial proportion of steel, the

text: hangers of metal; metal hose

text: sign is capable of deceiving the

text: fittings; reels, not of metal, non-

text: public as to the nature of the mechanical, for flexible hoses in goods applied for in Class 17. Class 6. For these goods, namely flexible For flexible pipes, tubes, hoses,

text: pipes, tubes, hoses, and fittings and fittings therefor, including therefor, including valves, nonvalves, non-metallic; non-metallic metallic; non-metallic connectors connectors for hoses; nonfor hoses; non-metallic couplings metallic couplings for tubes; nonfor tubes; non-metallic elbow metallic elbow joints for flexible joints for flexible pipes; nonpipes; non-metallic sealing rings metallic sealing rings for hose

text: for hose fittings in Class 17. fittings, the use of metal and thus

text: also steel is ruled out.

text: See prior decision on the same line of reasoning: 23/01/2002, R 789/2001‑3, TITAN (German word for ‘titanium’) for portable and relocatable buildings; modular portable building units for use in the construction of prefabricated relocatable buildings; prefabricated relocatable buildings constructed of modular portable building units, none of the aforesaid goods being made from or including titanium in Classes 6 and 19. During the appeal proceedings, the applicant – in an attempt to overcome an objection based on deception – offered to restrict the specifications in both classes by adding, at the end, the indication that none of the aforesaid goods were made from or included titanium. The Board held that such a restriction, if accepted, would have had the effect of rendering the trade mark deceptive from the standpoint of the German-speaking public, as they would assume that the goods were made from titanium when in reality this is not the case.

text: Bio-insect shocker The prefix ‘Bio’ refers to the 13/05/2020 idea of environmental protection, For biocidal preparations for use

text: the use of natural materials or in manufacture in Class 1 and even ecological manufacturing biocides in Class 5. processes; it gives the impression that the products are natural, do not harm health and are environmentally friendly. This is a quality that biocidal products can not have by definition. This is supported by the specific Regulation regarding biocidal products (Regulation No 528/2012). Therefore the mark was considered to be deceptive for

text: biocidal preparations for use in

text: manufacture in Class 1 and biocides in Class 5.

text: (…) there is a reasonable 14/05/2021 risk that the relevant public R 2082/2020‑5 might purchase meat packaging under the contested trade For beef, veal, poultry, game in mark ‘BUFFALO BEEF’ in a Class 29. supermarket, with a reasonable belief that buffalo or bison meat is being purchased, whereas beef, veal, poultry or game would be found inside the packaging (para. 70).

text: Cryobiostorage The component 'cryo' will be 26/03/2021 understood as a modifier in For various apparatus and R 1617/2020‑2 combinations meaning cold or

text: installations for heating purposes

text: frost. in Class 11. The goods for which protection is sought do not have a cooling, but rather a heating effect. It cannot therefore be ruled out that the target public will be deceived as to the purpose and intended purpose of these goods, that is, it expects a refrigerating apparatus, but receives the exact opposite. (…) (para. 47).

text: (…) the goods do not consist 26/03/2021 explicitly of nature imitating vinyl. R 103/2019‑2 For various metal building However, vinyl is used in many materials, small items of metal places and imitates various hardware in Class 6, and materials very well, for example, wood for building purposes, floor wood and metal. Therefore, boards of wood, leather and/or it is entirely conceivable that other materials, not of metal in a reasonably well-informed, Class 19. observant and circumspect consumer will be deceived by the actual composition of the goods marketed under the sign. In applying the sign to goods made of other materials, such as wood, leather or metal, there is a sufficiently serious risk that the sign in question (…) will let consumers assume that they are purchasing goods made of pure/high-quality vinyl instead of, for example, wood or metal. It can also be true that consumers will purchase the goods sold under the sign only because they expect characteristics of vinyl, for example, lightness, elasticity, which goods made of wood or metal do not have at all (para. 51). Just egg At least a significant part of the 14/02/2022 English-speaking general public For plant-based egg substitute; R 1425/2021‑5 will erroneously assume that the

text: liquid egg substitute; plant-based

text: foodstuffs are or contain only processed food in Class 29. eggs, or are based on eggs (of domestic hens), which is clearly not the case. The sign is therefore capable of deceiving the public about the nature of the foodstuffs at issue, given the meaning of the contested sign (paras 30-31).

text: Veggiemett For the German-speaking public, 26/09/2016 ‘Veggie’ is understood as an For meat, fish, poultry and R 2270/2015‑5 indication of purely vegetable

text: game, in particular sausage and

text: ingredients, or purely vegetable ham products; meat extracts in origin, and ‘mett’ is understood Class 29. as a meat product consisting specifically of mince. The overall message of the sign is meatfree variants of the food product mett, which traditionally consists of mince, meat, fish, poultry, game or meat extracts. A German-speaking consumer could erroneously assume that it involves a vegetarian foodstuff. (paras 20-22, 45).

text: MYBACON The relevant public for meat 29/11/2023,

text: , substitutes is the general public. MYBACON, EU:T:2023:769 For fungi-based meat substitutes; These goods are intended for

text: meat substitutes; prepared meals

text: general consumption and not

text: consisting primarily of meat

text: only for vegetarians or vegans,

text: substitutes including fungi-based

text: since anyone is likely at some meat substitutes in Class 29. time or another to acquire them either regularly or occasionally (§ 35-37). Some consumers will understand the sign applied for as meaning ‘meat from the back and sides of a pig, dried, salted and usually smoked, developed for their requirements’ and it is sufficient for the sign to be deceptive as referred to in

text: Article 7(1)

text: (g) EUTMR (§ 71).

text: Sign and goods Reasoning Case No

text: The specification is sufficiently EUTM No 18 553 925 broad to include beef. There is no specific reference in the sign, which indeed would qualify for an objection under

text: Article 7(1)

text: (g) EUTMR.

text: For meat in Class 29.

text: The combination of ‘Urban’ and 10/11/2020, ‘Coffee’ creates a logical and R 1273/2020‑4 conceptual unit that should not be artificially dissected. The Board pointed out that ‘Urban Coffee’ is not ‘coffee’, but ‘urban coffee’. ‘There is no such thing as an ‘urban (urban) coffee’. The sign For tea-based beverages, cocoa applied for could therefore not powder in Class 30. reasonably be understood to promise an ‘Urban coffee’ with certain (positive) characteristics (§ 10) and, it is assumed that the consumers would understand the sign ‘COBEA URBAN COFFEE’ as the umbrella mark for a provider specialising in coffee and this would easily also result in other goods being offered for sale, whether it to take away (in railway kiosks), be it in the supermarket shelf’ (§ 13).

text: The verbal elements of the sign EUTM No 18 496 748 read in Romanian: ‘Romanian tomatoes DRACULA’. The component ‘Romanian tomatoes’ is meaningful and conveys a direct message: tomatoes originating from Romania. The term ‘DRACULA’, despite its size and central position, would by itself not lead away from the For, inter alia, processed fungi descriptive message as neither and pulses in Class 29. pinpoints a business nor conveys a conceptual message which would dilute the meaning. The risk of deceit is excluded, however, as the consumer will be assisted by either the direct visualisation of the product (in this case processed fungi and pulses) or by a photo or a graphic representation of the specific foodstuff (processed fungi and pulsesin nontransparent packaging). Normally non-transparent packaging will include a picture or a graphic representation of the specific product (foodstuff).

text: The sign merely calls into EUTM No 18 595 383 mind the descriptive element ‘chocolate’, which is not fully displayed in the sign applied for.

text: For coffee, tea, cocoa, sugar, rice, tapioca, sago,

text: coffee substitutes; cocoa-

text: based beverages; coffee-

text: based beverages; coffee-based

text: beverage containing milk; coffee-

text: based beverages containing

text: ice cream (affogato); chocolate-

text: based beverages; tea-based

text: beverages; coffee beverages

text: with milk; chocolate-based

text: beverages; chocolate beverages

text: with milk; cocoa and cocoabased beverages; cocoa; cocoa

text: powder; cocoa beverages with

text: milk; instant cocoa powder in Class 30.

text: Sign and services Reasoning Case No

text: Port Charlotte The GC confirmed that the word 18/11/2015,

text: , PORT mark ‘Port Charlotte’ was not CHARLOTTE, EU:T:2015:863 For whisky in Class 33. deceptive regarding the origin of The judgment was appealed Registration for the trade the goods (whisky) as it did before the CJEU (14/09/2017, mark was originally sought

text: not designate a geographical

text: P, PORT CHARLOTTE, for ‘alcoholic beverages’ but region. The GC held that ‘Port EU:C:2017:693), but the grounds pursuant to the invalidity action, Charlotte’ read as a whole and of deceptiveness were not the list was limited to only

text: as a logical and conceptual

text: examined. ‘whisky’. unit, would be understood as a harbour named after a person, without any direct link to the PDO ‘Porto’ or 'port' or a port wine (§ 71).

text: Antico Casale The GC underlined once again 27/06/2017,

text: , ANTICO that for a trade mark to be CASALE, EU:T:2017:439. For Classes 29, 30 and 35. deceptive with regard to the geographical origin of the goods or services, it is necessary that

text: the targeted public recognises

text: the sign as a reference to

text: a place or, indeed, to a

text: geographical origin. In the case at stake, the (Italian) consumer would not understand the sign Antico Casale as referring to a geographical origin or a specific place, since the mark does not convey a clear message about the goods, and is not likely to create unrealistic expectations in the mind of the consumers that the specified products only originate from an old farmhouse (§ 49; Case R 1337/2015-2, § 61-63). At the very most, it only gives a hint at them - that is not alone sufficient to deceive the public (§ 51, quoting Manpower).

text: Sign and Services Reasoning Case No

text: THE E-COMMERCE The Board found that the trade 11/07/2001, AUTHORITY mark was not deceptive, as R 803/2000‑1 it did not convey the firm For business services, namely, impression that the services

text: providing rankings of and other

text: issue from a governmental

text: information regarding electronic

text: or statutory organisation. (The

text: commerce vendors, goods and

text: and advisory services and

text: mark lacked distinctive character,

text: information in the area of

text: as it would be perceived by the electronic commerce in Class 42. English-speaking public merely as a simple statement of selfpromotion that makes a claim about the level of competence of the service providers.)

text: The Board held that French 11/11/2009, consumers would understand that R 235/2009‑1; the trade mark alludes to the confirmed 05/05/2011,

text: , fact that the services are supplied EU:T:2011:200 in France by a French teaching centre, and relate to learning how to ski ‘in the French way’. Furthermore, the French public For, inter alia, teaching of skiing had no reason to believe that, in Class 41. simply because of the presence of its tricolour logo (not a reproduction of the French flag), that the services are supplied by public authorities or even authorised by such authorities.

text: TSA LOCK The applicant claimed that since 22/03/2018,

text: , TSA LOCK, TSA stands for ‘Transportation EU:T:2018:164 For, inter alia, metal locks for Security Administration’ this luggage in Class 6, andnon-metal would make the relevant public locks for luggage in Class 20. believe the goods offered under the contested mark were supplied by the US organisation or at least were under their control (§ 58). The GC held that the applicant had not established by any means of evidence that the relevant public associated, at the relevant date, this being the date of filing the application, the letters ‘TSA’ in the contested mark with the American Transportation Administration. In such case, there can be no deception (§ 64).

text: Sign and services Reasoning Case No

text: JAPAN WHITE The Board confirmed that 20/03/2018, R 694/2017‑1, when used with respect to JAPAN WHITE For rice; husked rice; brown rice; the goods at issue, the sign

text: polished rice; cereal preparations

text: ‘JAPAN WHITE’ as a whole, in Class 30. immediately informs consumers, without further reflection, that the goods at issue (rice, cereals) ‘originate from Japan AND are of white colour’. It concluded that the mark as a whole was descriptive with respect to the goods applied for (except brown rice) and deceptive in connection with brown rice.

text: Sign and services Reasoning Case No

text: ARCADIA The Office, objected under 27/03/2000, R 246/1999‑1,

text: Article 7(1)

text: (c) EUTMR because ARCADIA, § 14 Originally applied for wines, the trade mark was descriptive of spirits (beverages) and liqueurs in the geographical origin of wines, Class 33. to the extent that Arcadia is a Greek region known for its wine production. The applicant offered to limit the specification of goods to exclude wines made in Greece, or to include only wines produced in Italy. The Office held that the proposed limitation would render the trade mark deceptive under

text: Article 7(1)

text: (g) EUTMR, since it would convey false information as to the origin of the goods. The mark was refused.

text: Published under CZ35 for Published under IT13 for gold Published under HU10 for silver platinum

text: Published under BR6 for tourism; national Published under JP3 for agricultural, forestry and and international promotion and advertising; fishery products and foodstuffs. marketing studies; business management; business administration; and office functions.

text: Published under QO60. Published under QO1. Published under QO1248.

text: AU Published under QO884 for the AFRICAN UNION.

text: European Union Intellectual EUIPO Property Office

text: Published under QO1742 Published under QO1718 Published under QO1717 (QO1743 to QO1746 in other (QO1719 to QO1741 in other languages) languages)

text: Published under QO188

text: Protected symbol Trade mark applied for

text: Flag of Greece EUTM application No 8 474 488 Although the flag is moving and partially covered by another element, the different elements, the colour, shape and format (proportion) of the Greek flag are reproduced in the mark.

text: Flag of the United Kingdom EUTM application No 13 169 313 The trade mark contains a stylised representation of the UK flag. The colours, shape and format (proportion) are reproduced in the mark.

text: Swiss flag EUTM application No 18 961 334 The square shape of the Swiss flag can be identified although the edges are slightly rounded.

text: French flag 18/03/2015, R 1731/2013‑1, LAPIN NA LA NOUVELLE AGRICULTURE (fig.) The French flag is incorporated into the trade mark. Although it is small, it is immediately recognisable.

text: EU flag EUTM application No 18 835 724 Published under QO188 French flag German flag Austrian flag The EU flag is moving, but all the heraldic elements of the flag are reproduced. The Austrian flag is partially covered but its heraldic elements are clearly visible. The German flag and the French flag are reproduced in the trade mark.

text: Flag of the EU EUTM application No 18 162 022 Published under QO188 The 12 yellow stars and the blue background of the EU flag are clearly reproduced in the trade mark even if the EU flag is moving.

text: EU flag EUTM application No 17 948 600 Published under QO188

text: Although the red grid hides part of the EU flag and the flag is tilted, all the heraldic elements of the EU flag are reproduced in the trade mark.

text: EU flag EUTM application No 18 508 393 Published under QO188

text: The 12 yellow stars are reproduced on a blue background in the trade mark.

text: EU flag EUTM application No 6 697 916; 01/03/2012, R 1211/2011-1, DIRO.net Lawyers for Europe (fig.); Published under QO188 13/03/2014,

text: , European Network Rapid Manufacturing The General Court highlighted that: 1. Even if the mark included three stars fewer than appear in the European Union flag, such a circumstance could not rule out the possibility that it contained an imitation of that flag. Firstly, it noted that the word element should be regarded as covering the part of the circle where the three missing stars should have appeared. Secondly, it considered that, despite the absence of these three stars, it was easy to recognise the shape of a circle by tracing the trajectory of the nine stars in one’s mind. Finally, she noted that the three stars in question could easily be imagined (13/03/2014,

text: , European Network Rapid Manufacturing, EU:T:2014:120, § 24). 2. The Board of Appeal acknowledged that the colours of the figurative elements of the mark at issue were different from those used by the European Union flag but considered that these differences were not substantial. Indeed, it noted that the emblems were not systematically reproduced in colour. In this respect, it pointed out that it was well known that the European Union’s bodies often used the European Union flag ‘in the form of a negative’, that is, by representing the stars in black on a white background (13/03/2014,

text: , European Network Rapid Manufacturing, EU:T:2014:120, § 25).

text: Protected symbol Trade mark applied for

text: EU flag EUTM application No 1 106 442; Published under QO188 21/04/2004,

text: , ECA, EU:T:2004:110

text: EUTM application No 2 785 368; Canadian state emblem

text: P &

text: P, RW (fig.), Published under CA2 EU:C:2009:477

text: Swiss state emblem EUTM application No 12 530 366; Published under CH27 28/10/2014, R 1577/2014-4, Swiss Concept (fig.) The trade marks contain a black and white representation of the protected symbol

text: Protected symbol Trade mark applied for

text: French flag EUTM application No 4 624 987, 05/05/2011,

text: , esf école du ski français (fig.), EU:T:2011:200

text: Although the colours of the French flag are recognisable, the trade mark does not reproduce the shape and format (proportion) of the French flag.

text: Flag of the United EUTM application No 15 008 253 Kingdom The shape and format (proportion) of the UK flag are not reproduced in the trade mark.

text: Swiss flag EUTM application No 18 213 246 The square shape and the colours of the Swiss flag are not reproduced in the trade mark.

text: Published under IE11 EUTM application No 11 945 797; 01/04/2014, R 139/2014‑5, REPRESENTATION OF A CLOVERLEAF (fig.) The Board considered that the graphic element of the trade mark applied for has a colour configuration that is clearly different from the Irish national symbols. These elements are so strong that the mere fact that the trade mark also contains a cloverleaf does not mean that the sign is similar to one of the national emblems of Ireland (paras 18-19).

text: Published under SE20 EUTM application No 13 580 981 The trade mark contains only one of the three crowns that are represented in the Swedish armorial bearing. In addition, the colour blue is missing, the shape is different, and further elements of the protected emblems are also absent.

text: Various state flags Invented example It is not possible to recognise a specific flag, as the sign could be a black and white reproduction of any of the four flags.

text: The five interlaced rings in blue, yellow, black, green and red, arranged in that order from left to right. The symbol consists of the Olympic rings alone, whether in a single colour or in different colours, as set out in the Nairobi Treaty on the Protection of the Olympic Symbol.

text: Protected symbol Trade mark applied for

text: Red cross EUTM application No 2 966 265 13/05/2008, C-2192 The trade mark clearly contains the emblem of the Red Cross on a white background, as defined by and protected by the Geneva Convention, as a discernible, individual portion of the mark (para. 23).

text: Euro EUTM application No 6 110 423 10/07/2013,

text: , MEMBER OF €e EURO EXPERTS (fig.), EU:T:2013:364 The EUTM application contains a heraldic imitation of the euro symbol.

text: Red cross EUTM application No 5 988 985 Applied for Classes 28 and 30.

text: The EUTM application contains a heraldic imitation of the Red Cross, which is protected by the Geneva Convention.

text: Protected symbol Trade mark applied for contains

text: Red Cross ‘Templar cross’ ‘Maltese cross’ (invented examples) A number of well-known red crosses have traditionally been used and are still in use. Their incorporation in a trade mark would not be considered a reproduction/heraldic imitation of the ‘Red Cross’. They consist of different shapes.

text: Red cross EUTM application No 2 362 085 28/06/2007, R 315/2006‑1, D&W REPAIR (fig.) Applied for Classes 8, 11 and 12.

text: The Red Cross cannot be said to be included in the contested EUTM because of the difference in colour. The Red Cross, as its denomination indicates, is red and the colour constitutes a very essential element of its heraldic description. The cancellation applicant’s argument that the colour orange may be very similar to some shades of red cannot be accepted (para. 20).

text: Protected symbol Trade mark applied for

text: , MEMBER OF €e EURO EXPERTS (fig.), EU:T:2013:364

text: A link will be established with the European Union. The trade mark contains a heraldic imitation of the protected emblems, and the other elements of the sign reinforce the link between the EUTM and the EU. (The other three elements forming the trade mark are not such as to neutralise the impression given to the public by the presence of the imitation euro symbol (10/07/2013,

text: , MEMBER OF €e EURO EXPERTS (fig.), EU:T:2013:364, § 109 et seq). The sign has not been applied for by the organisation itself or any related authority.

text: Euro EUTM application No 18 871 878 Applied among others for Class 35 (Publicity services) and Class 36 (financial services). The Euro symbol is reproduced in the sign. Considering that the sign is applied for financial services, a link can be established between the sign and the activities carried out by the European Union. The consumer will perceive a connection between the applicant and the organisation. The sign has not been applied for by the organisation itself or any related authority. The mark was refused on this basis for Class 36. The mark was accepted for Class 35, where no connection could be found with the institutions of the EU.

text: Red cross EUTM application No 18 996 208 Applied for Class 3 (Non-medicated cosmetics; essential oils; Beauty masks; toothpaste) and Class 5 (Vitamin supplements; Dietary supplements) The trade mark contains the symbol of the Red Cross. It is applied for healthcare-related goods. The mark would suggest to the public that there is a connection with the organisation to which the symbol relates, which is involved in medical services in general. The sign has not been applied for by the organisation itself or any related authority.

text: Protected symbol Trade mark applied for

text: Euro EUTM application No 10 868 985 Applied for Classes 12, 35, 38, 39 and 42 (car rental related).

text: The EUTM application contains a heraldic imitation of the euro symbol. However, the mark would not suggest to the public that there is a connection with the European Union; the symbol as used in the mark will be perceived in relation to the ‘good price’ of the goods and services.

text: Euro EUTM application No 11 076 866 Applied for Classes 9, 35, 36, 37 and 42 (e.g. services related to building and construction).

text: The EUTM application contains a heraldic imitation of the euro symbol. However, the mark would not suggest to the public that there is a connection with the European Union. There is nothing in the sign in relation to the goods and services applied for that could suggest a connection to the EU.

text: Section 4 Absolute grounds for refusal — Chapter 9 Trade marks in conflict with flags and other symbols (

text: Article 7(1)

text: (h) and (i) EUTMR) State flag of the Netherlands State flag of Luxembourg

text: Section 4 Absolute grounds for refusal — Chapter 10 Trade marks in conflict with geographical indications (

text: Article 7(1)

text: (j) EUTMR) 6.2.4 GI is protected under an international agreement signed only by Member States

text: Some provisions of

text: Regulation (EU) No 1308/2013

text: of the European Parliament and of the Council of 17 December 2013 establishing a common organisation of the markets in agricultural products and repealing Council Regulations

text: (EEC) No 922/72

text: (EEC) No 234/79

text: (EC) No 1037/2001

text: and

text: (EC) No 1234/2007

text: and

text: Regulation (EU) 2019/787

text: of the European Parliament and of the Council of 17 April 2019 in respect of geographical indications still remain in force, i.e. Article 93

text: Regulation (EU) No 1308/2013

text: Article 3(4) of Regulation (EU) 2019/787

text: Regulation (EU) No 1151/2012

text: has been repealed.

text: Definition of GIs under EU regulations: wine (see

text: Article 93 of Regulation (EU) No 1308/2013

text: ); spirit drinks (see

text: ); agricultural products (see

text: Article 46 of Regulation (EU) 2024/1143

text: ); and craft and industrial products (see

text: Article 6(1) of Regulation (EU) 2023/2411

text: Scope of protection of GIs is covered under

text: Article 26 of Regulation (EU) 2024/1143

text: and

text: Article 40 of Regulation (EU) 2023/2411

text: . 28 ‘Registered GIs’ can be found in the Union registers. 29 ‘Protected GIs’ in the EU and beyond are those protected under the international agreements, and they will not usually be found in the Union registers (only exceptionally, e.g. Switzerland). GIview also contains relevant data for some proceedings, such as information on producer groups, which cannot be found in the Union registers.

text: The term ‘notified’ is used in place of ‘applied’ where the request to register the EU-level craft and industrial GI has been communicated to both the Commission and the Office, in accordance with

text: Article 70 of Regulation (EU) 2023/2411 of 18 October 2023

text: . 31 Ibid 32 Ibid

text: GI EUTM No

text: CHAMPAGNE CHAMPAGNE VEUVE DEVANLAY

text: (PDO-FR-A1359) (EUTM No 11 593 381)

text: (EUTM No 17 945 350)

text: (PDO-FR-A0273) (EUTM No 17 889 185)

text: RIAS BAIXAS

text: (PDO-ES-A1119) (EUTM No 17 067 141)

text: GI EUTM No

text: PORTO / PORT / VINHO DO

text: PORTO / PORT WINE / VIN DE PORTO / OPORTO / PORTVIN /

text: PORTWEIN / PORTWIJN

text: (EUTM Nos 11 907 334 and 2 281 970)

text: The criterion of use which is ‘detrimental to the reputation’ was introduced by the new

text: Regulation (EU) 2024/1143

text: , while the criteria of use which ‘weakens or dilutes the reputation’ were introduced on 2 December 2021 as a result of the reform carried out by

text: Regulation (EU) 2021/2117

text: GI EUTM Explanation

text: The country name Scotland is a SCOTCH WHISKY noun that evokes the adjective (PGI-GB-01854) ‘Scotch’, which forms part of the GI ‘Scotch Whisky’. (EUTM No 15 420 607)

text: The trade mark evokes the GI Suomalainen Vodka / Finsk FINLAND TASTE (fig.) and will be refused for the Vodka / Vodka of Finland for alcoholic beverages (invented entire broad category of ‘alcoholic (PGI-FI-02040) example) beverages’ as it contains spirit drinks and vodka. The term ‘ASKLIPIOU’, which forms part of the PDO ‘Λυγουριό Ασκληπιείου / Lygourgio Asklipiou’, is the genitive case of the noun ‘ASKLEPIOS’ (or ‘ASKLIPIOS’), which appears in the nominative

text: Λυγουριό Ασκληπιείου /

text: case in the contested EUTM.

text: LYGOURIO ASKLIPIOU

text: The genitive case denotes, inter (PDO-GR-0050) alia, origin and possession, and (EUTM No 15 510 721) in this case evokes the PDO. The figurative element is a visual repetition of the term as it consists of a typical representation of the ancient Greek god Asclepios.

text: PORC DE NORMANDIE

text: (PGI-FR-0192) VOLAILLES DE NORMANDIE The term Normandy will be linked (PGI-FR-0154) with the French term ‘Normandie’.

text: CAMEMBERT DE NORMANDIE

text: (PDO-FR-0112) (EUTM No 17 772 401)

text: The word element in the later trade mark can be seen as CHAMPAGNE phonetically and visually similar (PDO-FR-A1359) to the term Champagne and will have to be assessed for (EUTM No 17 962 122) evocation.

text: The sign contains the full reproduction of the non-generic PIMENTÓN DE LA VERA part of the compound GI (e.g. ‘LA (PDO-ES-0321) VERA’) but omits generic parts (EUTM 18 934 245; Class 30 (‘PIMENTÓN DE’). paprika; Class 35)

text: IRISH POTEEN / IRISH POITÍN

text: (PGI-IE+GB-02080) Reference to ‘Irish’ as seen in this

text: IRISH WHISKEY / UISCE

text: later trade mark will have to be

text: BEATHA EIREANNACH / IRISH Irish Monk

text: assessed for evocation against

text: (EUTM No 17 496 308) the registered GIs containing the (PGI-IE+GB-01897) same term.

text: IRISH CREAM

text: The term Zamora is clearly visible

text: TIERRA DEL VINO DE

text: in both the GI and the later trade

text: mark, and an assessment for (PDO-ES-A0634) evocation will have to be carried out. (EUTM No 17 009 127)

text: The protected term ‘Tequila’ for agave spirit drinks is used in TEQUILA TEQUILHER an altered manner in the trade (PGI-MX-01851) (WO 1 570 323) mark applied for Class 33 goods, evoking the GI for identical goods.

text: The protected geographical term ‘Del Jerte’ for cherries is used in an altered manner in the trade CEREZA DEL JERTE mark applied for for goods in (PDO-ES-0233) Classes 29 and 31, evoking in (EUTM 18 473 078) this manner the ‘Cereza del Jerte’ (GI). The name ‘z Podhalaʼ (a version of the name ‘Podhale’

text: JAGNIĘCINA Z

text: indicating that something is JAGNIĘCINA PODHALAŃSKA PODHALA(invented example) from the ‘Podhale’ region) (PGI-PL-0837) Adjective in PGI → Noun in is a noun that evokes the EUTM adjective ‘Podhalańska’, which forms part of the GI ‘Jagnięcina

text: Podhalańska’.

text: The name ‘Ibicenco’ is an IBIZA / EIVISSA (invented example) adjective of place that evokes the (PGI-ES-A0110) noun ‘Ibiza’, which constitutes the Noun in PGI → Adjective in GI ‘Ibiza / Eivissa’. EUTM

text: The term ‘la Palma’ within the sign ‘Condesa de la Palma’ reproduces the GI ‘La Palma’ for wine. However, the meaning of the sign taken as whole, with the combination ‘Condesa de’, in relation to the LA PALMA CONDESA DE LA PALMA products concerned (wine), does (PDO-ES-A0510) (invented example) not constitute an independent component, but a playful combination of the GI name that retains the link with the registered GI. Therefore, this mark will be considered to evoke the GI ‘La Palma’ for wine.

text: GI EUTM Explanation

text: Due to the clear conceptual meaning of the designation ‘VERDI’, the relevant public will not be led to believe that the aforementioned designation depicts the PDO in question. The presence of a partial VINHO VERDE VERDI correlation between the terms (PDO-PT-A1545) EUTM No 15 080 278 ‘VERDI’ and ‘VERDE’ is not sufficient to offset the fact that the consumer of the goods in question will perceive the sign ‘VERDI’ as a clear reference to the Italian opera composer. (06/04/2017, R 1972/2016‑5, VERDI, § 12 and 14)

text: The mark contains the term ‘craft beer’. Therefore, it is unlikely that it will be perceived as evoking a GI relating to wine.

text: CAPE GIRARDEAU COUNTY

text: (OZARK MOUNTAIN) Moreover, ‘Cape’ by itself is not the significant part of the GI. (Non-EU-country GI) (United Therefore, in order to evoke States of America) the GI, reference to the other EUTM No 16 081 614 geographically significant part of the GI (e.g. ‘Girardeau’) is necessary.

text: The fact that the trade mark

text: ROSÉE DES PYRÉNÉES

text: contains the generic term ‘Rosée’

text: does not in itself lead to an (PGI-ES+FR-1343) evocation of the PGI referred to. EUTM No 17 371 063

text: The mere reference to Laville is not sufficient to trigger a link with the PGI ‘Lavilledieu’ in the public’s mind. As many LAVILLEDIEU Laville Pavillon municipalities start with the term (PGI-FR-A1136) EUTM No 10 961 785 ‘Laville’, this term is commonly used and no direct link can be established with any particular GI product.

text: ‘ISOLA BIANCA’ means ‘WHITE ISOLA DEI NURAGHI ISLAND’. Although ‘ISOLA’ appears in the GIs ‘Isola dei (PGI-IT-A1140) Nuraghi’ and ‘S. Anna di Isola

text: S. ANNA DI ISOLA CAPO

text: Capo Rizzuto’, the term ‘ISOLA’

text: cannot evoke those GIs by itself, (PDO-IT-A0629) as it is merely a common term EUTM No 17 626 664 referring to an island.

text: Earlier GI NERO CHAMPAGNE CHAMPAGNE (PDO-FR-A1359) EUTM No 18 024 731

text: , NERO CHAMPAGNE / Champagne (GI), EU:T:2025:638: It is apparent from the specification of the PDO ‘Champagne’ (...) that champagne wines can be white or rosé, with the use of three grape varieties: Pinot Noir, Pinot Meunier and Chardonnay (…) it was very rare for a champagne to be composed exclusively of Pinot Noir and in that case, it was referred to by the words ‘blanc de noirs’ and that such a champagne would actually be white wine obtained from black grapes. Thus, the relevant public might understand the words ‘nero champagne’ as describing champagne made exclusively from pinot noir, which would not necessarily be the case (§ 78). [The Office is not precluded] from taking into consideration (…) facts which are well known, that is, which are likely to be known by anyone or which may be learnt from generally accessible sources (…) (§ 79). In that regard, the word ‘nero’ is used in the name of several well-known Italian grape varieties (…) (§ 80). Consequently, the relevant public could be misled into thinking that the mark applied for evokes the grape variety of the champagne at issue (...) (§ 81). (…) the word ‘nero’ will be understood by the relevant Italian-speaking public as meaning ‘black’. Therefore, in so far as the mark applied for covers wines complying with the specification of the PDO ‘Champagne’, that public is likely to be misled into thinking that that word refers to the colour of that wine (…) [and] that it is a new variety of champagne, namely a ‘black champagne’, even though, under the specification of the PDO, a champagne can only be white or rosé (§ 82). (...) the fact that black champagne does not exist does not rule out the possibility that the words ‘black champagne’ could be misleading. Indeed, it is customary for champagne, and more generally wine, to be described by its colour. The relevant public could therefore be misled into thinking that it is a new product on the market (§ 83). (…) [for the part of the relevant public not aware of the NERO family of marks] (...) the word ‘nero’ could be perceived as evoking either the champagne grape variety or its colour, with the result that (…) the mark applied for could be perceived as conveying a false or misleading indication (…) (§ 84).

text: GI EUTM Explanation

text: ‘Borgoña’ is the Spanish BOURGOGNE translation of the French PDO (PDO-FR-A0650) ‘Bourgogne’. There is an evocation of the PDO. EUTM No 2417269

text: An EUTM that contains the PÂTES D'ALSACE ALSATIAN PASTA expression ‘Alsatian Pasta’ will be (PGI-FR-0324) (invented example) considered as ‘evoking’ the PGI ‘Pâtes d’Alsace’.

text: PDO/PGI EUTM Explanation

text: (invented examples)

text: An EUTM that contains an expression such as ‘Rioja Style Red Wine’ will be considered

text: RIOJA STYLE RED WINE unacceptable even if it conveys (PDO-ES-A0117) the idea that the product in question is not a ‘genuine’ PDO Rioja wine.

text: An EUTM that contains expressions such as ‘Greek Style Plain Feta’ or ‘Arabian Feta’ Φέτα / FETA GREEK STYLE PLAIN FETA will be considered unacceptable (PDO-GR-0427) ARABIAN FETA even if it conveys the idea that the product in question is not a ‘genuine’ PDO Φέτα / Feta cheese.

text: Although the presence in a trade mark of an element of a GI which is generic or common does not lead to an objection based on

text: Article 7(1)

text: (j), a trade mark may still be exposed to and objected to based on any other of the grounds referred to in

text: Article 7

text: For example, in ‘Jupiter emeralds’ for precious stones (invented example of a GI), the term ‘emeralds’ describes the type of product covered by the GI. 37 For example, in ‘Coast of Jupiter’ for precious stones (invented example of a GI), the term ‘Coast’ is a usual name to indicate an area of land that is next to the sea. 38 The AG referred to the terms under (2) as ‘non-geographical’ or ‘common words’. In addition, the AG pointed out that the ECJ had already concluded that the term ‘name that has become generic’ under

text: Article 41

text: (concerning the use of generic terms), is also applicable to names that have always been generic.

text: GI EUTM

text: Camembert de Normandie

text: (EUTM No 7 389 158)

text: Compound GI Term afforded protection ‘Common’ term not afforded

text: Aceto Balsámico di Modena Modena Aceto (‘vinegar’) 40 Balsámico (‘balsamic’) 41 Mel dos Açores Açores Mel (‘honey’)

text: VINEGAR: ‘It is a sharp-tasting liquid, usually made from sour wine or malt, which is used to make things such as salad dressing’ (Collins Dictionary). 40 BALSAMIC: ‘It is a type of vinegar which tastes sweet and is made from grape juice’ (Collins Dictionary). 41 HONEY: ‘It is a sweet, sticky, yellowish substance that is made by bees’ (Collins Dictionary).

text: Costa d’Amalfi Amalfi Costa (‘coast’) 43 Ribera del Duero Duero Ribera (‘riverbank’) 44 Isla de Menorca Menorca Isla (‘island’)

text: COAST: ‘It is an area of land that is next to the sea’ (Collins Dictionary). 43 RIVERBANK: ‘It is the land along the edge of a river’ (Collins Dictionary). 44 ISLAND: ‘It is a piece of land that is completely surrounded by water’ (Collins Dictionary).

text: GI EUTM Explanation

text: The reference to ‘ALBA’ in the trade mark will not trigger a link with the PDO ‘ALBA’ as, considering the other elements of the trade mark and in particular the common first name ‘Daniel’, it

text: is likely to be understood as a surname. (PDO-IT-A1063) for wines EUTM No 14 955 736 for

text: CAVA

text: (PDO-ES-A0735) (12/07/2018, EU:T:2018:441, § 73 - 78; 91 - 95) for wines Considered as a whole, the terms in the contested mark, namely ‘cave’, ‘de’ and ‘tain’ are French-sounding, as can be recognised by a consumer who understands French, and the difference from the PDO ‘CAVA’ may also be understood by consumers who understand Spanish. EUTM Moreover, those words would be understood by those No 11 345 824 for consumers as referring to a wine cellar situated in a part of wines France, namely, ‘Tain’, which designates a city located in the south east of France. In the context of wines that are everyday consumer goods, since they are distributed in the EU by sectors such as large retailers, restaurants and cafés that are aimed at the general public, it may be considered that the average wine consumer in the EU is familiar with wines that come from France, regardless of what languages that consumer speaks, and that in many cases, those wines bear a designation containing a name corresponding to a place or location preceded by the words ‘cave’ or ‘château’. For these reasons, the contested mark will be understood by the consumer, regardless of their language skills, as referring to a wine produced in France, in the region or town whose name appears in that mark, irrespective of whether this wine is sparkling or not, and the association thus made by the consumer between the product and its French origin precludes any possibility of evocation of the PDO ‘CAVA’.

text: P

text: (14/09/2017, PORT CHARLOTTE, EU:C:2017:693, § 115-116, 124) § 115 ‘The incorporation in a trade mark of a name which is protected under Regulation No 1234/2007, such as the designation of origin “port”, cannot be held to be capable of exploiting the reputation of that designation of origin, for the purposes of

text: Article 118

text: m(2)(a)(ii) of that regulation, if that incorporation does not lead the relevant public to associate that mark or the goods in respect of which it is registered

text: PORTO / PORT /

text: with the designation of origin concerned or the wine product in

text: VINHO DO

text: respect of which it is protected.’

text: PORTO / PORT

text: § 116 ‘[…] that the sign “PORT CHARLOTTE”, since it

text: WINE / VIN PORT

text: consists of the term “port” and the first name Charlotte, will be

text: DE PORTO / CHARLOTTE

text: perceived by the relevant public as a logical and conceptual

text: OPORTO /

text: EUTM unit referring to a harbour, that is to say a place situated

text: PORTVIN /

text: No 5 421 474 for on the coast or on a river, with which a first name, which

text: PORTWEIN /

text: whisky constitutes the most important and most distinctive element in

text: the contested mark, is associated. According to the General (PDO-PT-A1540) Court, the relevant public will not perceive, in that sign, for wines any geographical reference to the port wine covered by the designation of origin in question.’ § 124 ‘The General Court, without erring in law, applied the fundamental criterion deriving from that case-law, by holding, in paragraph 76 of the judgment under appeal, that, having regard to the findings set out in paragraph 71 of that same judgment, even though the term “port” forms an integral part of the contested mark, the average consumer, even if he is of Portuguese origin or speaks Portuguese, in reaction to a whisky bearing that mark, will not associate it with a port wine covered by the designation of origin in question.’

text: , Quevedo Port, EU:T:2025:182) § 14 ‘As a preliminary point, it should be noted that it is apparent from the contested decision, first, that the wine protected by the earlier PDO is very well-known and associated with the image of prestige, high quality and traditional products fulfilling strict requirements and quality standards, and, secondly, that the olive oil designated by the contested sign and the wine protected by the earlier PDO are not comparable products.’ § 43 ‘it must be observed that the association advocated by the applicant in respect of the contested sign seems unlikely PORTO / PORT / where the relevant public encounters that sign in the context VINHO DO of olive oil. In such a situation, the view cannot be taken that PORTO / PORT the mere use of the word “port” in the expression “quevedo WINE / VIN Quevedo Port port” is sufficient to constitute such a close connection with DE PORTO / the geographical origin protected by the earlier PDO that it OPORTO / EUTM cannot be dissociated from that origin. On the contrary, the PORTVIN / No 18 461 727 for more likely scenario, [..], is that the expression “quevedo port” PORTWEIN / olive oil would be perceived by the relevant public as a logical and PORTWIJN conceptual unit referring either to a harbour, that is to say a (PDO-PT-A1540) location by the sea or a river, or to a fanciful and meaningless for wines expression, without that public connecting it to the logical and conceptual unit of a wine of quality due to its geographical provenance.’ § 44 ‘The applicant is also not convincing when it claims that the full reproduction of the name “Port” of the earlier PDO in the contested sign is sufficient to constitute a commercial use for the purposes of

text: Article 103(2)

text: (a) of Regulation No 1308/2013.’ § 48 ‘Consequently, it is necessary to reject the applicant’s arguments disputing the finding of the Board of Appeal that the degree of similarity between the signs was not sufficient to be classified as a commercial use for the purposes of

text: Article 103(2)

text: (a)(ii) of Regulation No 1308/2013.’

text: PENISOLA The EUTM is acceptable because the logical and conceptual SORRENTINA unit translates as ‘Dairy factory in/of Sorrento’, which precludes the evocation of the two GIs and is a new distinct (PDO-IT-1546) EUTM conceptual unit for the Italian public. For the part of the public for olive oil No 17 887 237 that does not understand this unit, other elements of the LIMONE DI mark will be overwhelmingly different to those of the two GIs, for goods in SORRENTO resulting in no evocation. Classes 29, 30 (PGI-IT-0098) and services in for lemons Class 35

text: GI EUTM Explanation

text: RIOJA SANTIAGO (28/04/2010, R 53/2010‑2) The trade mark applied for consists of the terms ‘RIOJA’ and ‘SANTIAGO’, each of which coincides with a PDO for wines, the former (RIOJA) being protected by the European Union and the latter (SANTIAGO), a geographical indication for a wine originating from Chile, being protected under a bilateral agreement between the European Union and the Republic of Chile.

text: RIOJA RIOJA

text: It is not possible to accept any limitation that includes wine

text: (PDO‑ES‑A0117) originating from the territory of one of the two designations EUTM SANTIAGO of origin since such a limitation automatically excludes wines No 8 237 224 originating from the other designation of origin, which inevitably (Chilean PGI) for wines in means that the trade mark applied for will lead to confusion. both for wines Class 33 By the same token, a hypothetical limitation of the list of goods to wine from the geographical area covered by either of the designations of origin, e.g. ‘wines from the Rioja designation of origin and wines from the Santiago designation of origin’, in Class 33, would be covered by the prohibition of

text: Article 7(1)

text: (j) EUTMR insofar as the trade mark would inevitably – and confusingly – identify wines with a geographical origin other than that of the respective designations of origin included under the trade mark. Preventing such an eventuality is the principal purpose of that Article.

text: GI EUTM Explanation

text: ‘Mojama de Barbate’ and ‘Mojama de Isla Cristina’ are

text: MOJAMA DE

text: two different PGIs for ‘mojama’, the major difference being

text: geographical origin (Cádiz and Huelva, respectively). (PGI‑ES‑01211) It is not possible to accept any limitation that includes ‘mojama’

text: MOJAMA DE ISLA

text: EUTM originating from the territory of one of the two PGIs since such CRISTINA(PGI‑ES‑ No 16 842 254 a limitation automatically excludes ‘mojama’ originating from the 01210) for mojama in territory of the other PGI, which inevitably means that the trade Both for mojama mark applied for will lead to confusion. Class 29

text: GI EUTM Explanation

text: Throughout Europe it is common practice to have ‘overlapping’ GIs. Although the smaller GIs, that form an island within a bigger GI, usually respect the conditions of the bigger GI, this is not a EUTM general rule. For instance, in France, such pyramidal structures CÔTES DU RHÔNE No 17 917 599 are quite common in big wine growing regions such as Bordeaux, for wines in Bourgogne and Alsace, but there are exceptions. (PDO‑FR‑A032) Class 33 VACQUEYRAS For this particular case, a limitation can be introduced for the (PDO‑FR‑A0151) smaller GI. The public will not be deceived as to the geographical origin of the products as this is allowed by the labelling rules. Both for wine The EUTM was registered with the following limitation: Class 33:

text: Wine complying with the specifications of the protected

text: designation of origin ‘Vacqueyras’. The limitation ‘Vacqueyras’ (GI) wine is also acceptable.

text: GI EUTM Explanation

text: TORO TORO Toro is a region within the province of Zamora. The sign ZAMORANO reproduces in its entirety the PDO ‘Toro’ and uses the non- (PDO‑ES‑A088) generic part of the compound PDO ‘Queso Zamorano’. (invented) for wine A limitation should be introduced for ‘Toro’ (GI) wine, but the mark for wines in

text: should be partially refused for evoking ‘Queso Zamorano’ (GI) Class 33 and

text: cheese. cheese in (PDO‑ES‑0089) Class 29 for cheese

text: GI EUTM Explanation

text: Sobrasada de ‘Use’ of the non-generic parts of both compound GI names in Mallorca the trade mark applied for (i.e. Mallorca) for identical products SUN OF to those covered by the GIs (sausage and pastry), would be (PGI‑ES‑0097) MALLORCA considered ‘evocation’ of the respective GIs. A limitation cannot for sausage (invented) for therefore be applied and the mark will be refused. Ensaimada meat, in de Mallorca / Class 29 and Ensaimada pastry in mallorquina Class 30 (PGI‑ES‑0277)

text: for pastry

text: GI EUTM Explanation

text: The term ‘Champagne’ in the EUTM, in relation to ‘alcoholic Champagne beverages’, may be regarded as using ‘Champagne’ (GI) and, (PDO‑FR‑A1359) at the same time, evoking ‘Ratafia champenois’ (GI), and ‘Marc de Champagne / Eau- de-vie de marc de Champagne’ (GI). for wine The application can only be accepted if a limitation is introduced

text: AXM for ‘Champagne’ (GI) wine and both ‘liqueur’ and ‘grape marc champenois(PGI‑F CHAMPAGNE spirit’ are removed from the specification (a limitation cannot be R‑02062) (invented) used to overcome the objection on evocation). for liqueur for alcoholic Depending on the outcome of the limitation, the other goods will Marc de be assessed under

text: Article 7(1)

text: (g) EUTMR. beverages in

text: Champagne / Eau-

text: Class 33 However, if the EUTM application included in full a different

text: de-vie de marc de

text: GI with the term ‘Champagne’ (e.g. EUTM ‘AXM MARC DE Champagne(PGI‑F CHAMPAGNE’), it can be accepted if the goods are properly R‑02063) limited (only to this GI). For example, Class 33: ‘Marc de for grape marc spirit Champagne / Eau-de-vie de marc de Champagne’ (GI) grape marc spirit.

text: GI EUTM Explanation

text: Prosciutto di The EUTM evokes the GIs and the objection cannot be overcome Modena by applying a limitation, so the application will be refused on the basis of evocation of the three GIs within the Modena region. (PDO‑IT‑0066)

text: for ham

text: Zampone Modena (invented) (PGI‑IT‑1501)

text: for sausage Class 29 Cotechino Modena (PGI‑IT‑1500) for sausage

text: GI EUTM Explanation

text: Alpes-de-Haute-Provence Memories of Provence An objection will be raised since the relevant public, when (PGI-FR-A1115) for alcoholic beverages confronted with the applied (invented example) Coteaux dʼAix-en-Provence trade mark containing the term ‘PROVENCE’ in respect of the (PDO-FR-A0159) general category of ‘alcoholic Coteaux Varois en Provence beverages’, which includes ‘wine’, can easily establish a clear (PDO-FR-A0725) and direct link with any of the Côtes de Provence compound GIs protected for wine and that contain as part of their (PDO-FR-A0392) name the term ‘PROVENCE’. Les Baux de Provence The sign evokes the three referred GIs. (PDO-FR-A0272)

text: All for wines

text: GI EUTM Explanation

text: Huile d’olive de Haute- Provence Taste of Provence An objection will be raised since the relevant public, when (PDO-FR-0110) applied for edible oils confronted with the applied (invented example) Huile d’olive dʼAix-en-Provence trade mark containing the term ‘PROVENCE’ in respect of the (PDO-FR-9111) broad term ‘edible oils’, which Both for olive oils includes ‘olive oil’, can easily establish a clear and direct link with any of the compound GIs protected for wine and that contain as part of their name the term ‘PROVENCE’. The sign evokes the two referred GIs.

text: Products covered by the PDO/PGI Comparable products

text: Other types of wine in Annex VII Regulation

text: (EU) No 1308/2013

text: . De-alcoholised wine.

text: Wine-based drinks; de-alcoholised wine-based

text: drinks.

text: Aromatised wine; aromatised-wine based drinks

text: (e.g. sangria).

text: Grape-based spirits

text: Other types of aromatised wine (e.g. vermouth,

text: bermet). Aromatised-wine based drinks (e.g. sangria). Aromatised wines • All types of wine; wine-based drinks.

text: De-alcoholised wine; de-alcoholised wine-

text: based drinks. Other types of spirits.

text: Spirit-based drinks; cocktails.

text: , PORTSOY / Port, EU:T:2025:183, § 62-63, 65, 67, 70; 26/02/2025,

text: , Quevedo Port / Port, EU:T:2025:182, § 14, 76-78. 46 Ibid. PORTSOY. 47 Ibid. QUEVEDO PORT.

text: Preserved, frozen, dried and cooked form of the

text: same fruit. More processed products, such as jams, are not regarded to be comparable. The GI product

text: Fresh fruit

text: must have undergone minimal processing. For example, ‘berries’ v ‘frozen berries, dried berries, preserved berries and cooked berries’.

text: GI in the EUTM Specification Explanation for the objection

text: (use or evocation)

text: POMME DU LIMOUSIN Jellies, jams Apples as an ingredient of jellies, jams. (PDO‑FR‑0442) for apples

text: PROSCIUTTO DI PARMA Pizza Ham as a topping ingredient of a pizza. (PDO‑IT‑0067) for ham

text: TURRÓN DE AGRAMUNT / Ice cream Nougat as an ingredient for ice TORRÓ D’AGRAMUNT cream. (PGI‑ES‑0167) for nougat

text: BERGAMOTTO DI REGGIO Tea Bergamot as an ingredient for CALABRIA – OLIO tea.

text: (PDO‑IT‑0105) for essential oil

text: PROHIBITED CONDUCT GOODS AND SERVICES CAN THE OBJECTION BE

text: WAIVED BY LIMITING G/S?

text: ‘USE’ of the GI Goods identical to the GI product Yes, if correctly limited to comply and services relating to such with the product specification of

text: Article 26(1)

text: (a) of Regulation goods the GI in question.

text: (EU) 2024/1143

text: or

text: Article 40(1)

text: (a)

text: Regulation (EU) 2023/2411

text: Comparable goods No, by definition, comparable goods cannot meet the product specification of the GI in question. Processed or manufactured No, final goods are different to goods in which the GI product is the GI product and cannot meet an ingredient, part or component the product specification of the GI in question. ‘EVOCATION’ of the GI Goods identical to the GI product No, the name of the GI in the and related services

text: Article 26(1)

text: (b) of Regulation mark is presented in an altered

text: (EU) 2024/1143

text: or

text: Article 40(1)

text: Comparable goods manner. (b)

text: Regulation (EU) 2023/2411

text: Processed or manufactured goods in which the GI product is an ingredient, part or component

text: GI in the EUTM Original specification Acceptable list of Explanation (use) (not acceptable) goods and services

text: The EUTM can be

text: ‘Tokaj / Tokaji’ (GI) wine

text: accepted only for wine TOKAJ / TOKAJI Wines Retail of ‘Tokaj / Tokaji’ covered by the PDO (PDO-HU-A1254) Retail of wines (GI) wine and services to which it relates. The EUTM can be

text: ‘Tequila’ (GI) spirit drink

text: accepted solely for the TEQUILA Spirit drinks Retail of ‘Tequila’ (GI) spirit drink covered by (PGI-MX-01851) Retail of spirit drinks spirit drink the PGI and services to which it relates. ‘Meat’ includes products (e.g. pork) that cannot

text: ‘Welsh Beef’ (GI)

text: comply with the

text: agricultural product

text: specifications of a WELSH BEEF Meat Wholesale of ‘Welsh particular PGI that (PGI-GB-0057) Wholesale of meat Beef’ (GI) agricultural covers the specific product product beef meat. The same applies to related services. The category fruits includes products such as pears or peaches,

text: POMME DU LIMOUSIN

text: ‘Pomme du Limousin’

text: Fruits which cannot meet the (PDO-FR-0442) (GI) agricultural product product specification of

text: ‘Pomme du Limousin’

text: (GI).

text: The category jewellery includes products such

text: ‘Jupiter earrings’ (GI)

text: JUPITER EARRINGS as bracelets, necklaces,

text: Jewellery craft and industrial

text: (invented GI example) which cannot meet the

text: product specification of ‘Jupiter earrings’ (GI). The EUTM can be accepted for wine MOSLAVINA complying with the

text: Alcoholic beverages

text: ‘Moslavina’ (GI) wine; product specification of (PDO-HR-A1653) (except beers) spirits, rum. the PDO; also for, spirits for wine and rum, as they are not comparable products to wine. The EUTM can be accepted for wine complying with the RIOJA product specification of (PDO-ES-A0117) the PDO. Wine, spirits ‘Rioja’ (GI) wine; spirits. for wine The EUTM can be accepted for spirits as they are not considered comparable to wine.

text: The spirits category must be narrowed down to the product protected by the GI ‘Brandy ‘Brandy de Jerez’ (GI) de Jerez’. The EUTM BRANDY DE JEREZ spirit drink application must be refused for whisky, as (PGI-ES-01944) Spirits; brandy; whisky or being comparable to the for brandy or weinbrand ‘Brandy de Jerez’ (GI) product covered by the

text: ‘Brandy de Jerez’ (GI), and for the general category of spirits, as all spirits are considered comparable.

text: The EUTM can be accepted for the product covered by the ‘Scotch

text: ‘Scotch Whisky’ (GI)

text: Whisky’ (GI). SCOTCH WHISKY spirit drink; wine. Whisky; alcoholic It is up to the applicant (PGI-GB-01854) or beverages to specifically list the for whisky ‘Scotch Whisky’ (GI) non-deceptive and nonwhisky; wine. comparable spirit drinks such as wine in this example.

text: GI Country of origin Products

text: Aguardiente chileno Chile Spirit drinks

text: Rooibos / Red Bush / Infusion Rooibostee / Rooibos tea / South Africa Rooitee / Rooibosch

text: Breede River Valley South Africa Wine

text: Abricotine / Eau-de-vie d’abricot Fruit spirit Switzerland du Valais

text: Council Decision (EU) 2019/1754 of 7 October 2019

text: on the accession of the European Union to the Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications. 49

text: Regulation (EU) 2019/1753

text: of the European Parliament and of the Council of 23 October 2019 on the action of the Union following its accession to the Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications. 50 WIPO currently administers a database including information on all the GIs protected under the Lisbon system: Lisbon Express, available at: https://www.wipo.int/ipdl/en/search/lisbon/search-struct.jsp. 51 The amending

text: Council Decision (EU) 2023/2412

text: assigns the Office the role of competent authority under the Geneva Act for GIs for craft and industrial products. This is to become applicable from 1 December 2025. These Guidelines will be updated in due course to reflect this change.

text: [1] Member States (Bulgaria, the Czech Republic, France, Italy, Hungary, Portugal and Slovakia) are party to the Lisbon Agreement for the Protection of Appellations of Origin and their International Registration of 1958 (as revised in Stockholm, Sweden, on 14/07/1967, and as amended on 28/09/1979).

text: GI/TTW EUTM Limitation

text: RIOJA MARQUÉS DE SAN JUAN ‘Rioja’ (GI) wine and ‘Reserva’ RESERVA 2010 RIOJA (TTW) wine. (PDO-ES-A0117) for wine

text: (invented example) (TTW)

text: OSCYPEK TWARÓG WĘDZONY OSCYPEK No limitation possible because the sign represents an impossible (PDO-PL-0451) for cheese combination. The GI requires (invented example) TWARÓG WĘDZONY 60 % of sheep milk and the product is ‘smoked cheese’, (TSG) whereas the TSG requires only cow’s milk and relates to ‘smoked curd cheese’. The mark will be refused for cheese.

text: Commission Implementing

text: Regulation (EU) 2019/34 of 17 October 2018

text: laying down rules for the application of

text: Regulation (EU) No 1308/2013

text: of the European Parliament and of the Council as regards applications for protection of designations of origin, geographical indications and traditional terms in the wine sector, the objection procedure, amendments to product specifications, the register of protected names, cancellation of protection and use of symbols, and of

text: Regulation (EU) No 1306/2013

text: of the European Parliament and of the Council as regards an appropriate system of checks OJ L 9, 11.1.2019, pages 46-76, and Commission Delegated

text: Regulation (EU) 2019/33 of 17 October 2018

text: supplementing

text: Regulation (EU) No 1308/2013

text: of the European Parliament and of the Council as regards applications for protection of designations of origin, geographical indications and traditional terms in the wine sector, the objection procedure, restrictions of use, amendments to product specifications, cancellation of protection, and labelling and presentation, OJ L 9, 11.1.2019, pages 2-45.

text: Directive

text: of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks, OJ L 299, 8.11.2008, p. 25 . 55

text: Directive (EU) 2015/2436

text: of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks (Recast), OJ L 336, 23.12.2015, p. 1 . 56

text: Regulation (EU) 2017/1001

text: of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark, OJ L 154, 16.6.2017, p. 1 .

text: Case No Comment

text: CHÂTEAU is, inter alia, a historical expression related to a type of area and type of wine, and is reserved for wines originating from an estate that actually exists and/or has the exact word in its EUTM No 17 476 656 name. The relevant public will link the term ‘château’ in the sign with the traditional term ‘Château’. The TM is therefore objectionable. As a result, the specification in Class 33 was limited to: Wines complying with the definition/conditions of use of the traditional term for wines ‘Chateau’; alcoholic beverages (other than wines).

text: ‘Viejo’ is a Spanish TTW for liqueur wine and for wines with a GI. ‘Pulgar’ is a term used in the wine field to refer to the part of the branch with two or three buds that is left in the vines when pruning them, so that the shoots can sprout (as depicted in EUTM No 17 967 391 the sign). The Office considered that, despite the fact that ‘viejo’ is not only a TTW but also a commonly used term to refer to ‘old’, and considering the elements of the sign all point to the wine field, there existed a conflict with the TTW ‘viejo’. As a result, the specification in Class 33 was limited to: wines complying with the definition/conditions of

text: use of the traditional term for wine ‘Viejo’; alcoholic

text: beverages (except beers and wines).

text: ‘Clásico’ is a Spanish TTW for liqueur wines and wine of overripe grapes. The sign was applied for in EUTM No 17 874 618 respect of wines . EL CLÁSICO The relevant public will link the term ‘clásico’ in the sign with the TTW ‘Clásico’. The trade mark is therefore objectionable.

text: Case No Comment

text: The addition of the term ‘RESERVA’ within the expression ‘RESERVA DE LA BIOSFERA’ does not misuse or give misleading/false information with regard to the TTW ‘reserva’. The term ‘reserva’ in the TM should not be assessed out of context. ‘Reserva’ is not only a TTW but also has, in the present case, another meaning, which has no EUTM No 15 102 015 obvious link with the TTW: in the EUTM application, combined with the word ‘biosfera’, ‘reserva’ clearly refers to a ‘natural space’. Note also that the sign does not refer expressly to a wine. In light of the above, the expression ‘RESERVA DE LA BIOSFERA’, read as a whole, constitutes a logical and conceptual unit, in which ‘RESERVA’ is qualified by the other terms: ‘DE LA BIOSFERA’. There is no direct link being made with the TTW ‘RESERVA’ as clearly the term will not be identified as providing information on the quality of wine. Moreover, the structure of the sign confirms that ‘reserva’ is not used in isolation or in a different typeface or size. The TM is acceptable.

text: The inclusion of the term ‘NOBLE’ in the expression ‘NOBLE DRAGON’ does not misuse or give misleading/false information with regard to the TTW NOBLE. ‘Noble’ is not only a TTW but also has, in the present case, another meaning, which has no obvious link with the TTW. In this particular case, the expression ‘NOBLE DRAGON’ constitutes a logical and conceptual unit, in which ‘NOBLE’ directly qualifies the EUTM No 14 997 803 term ‘DRAGON’ and therefore does not provide information on the quality of the wine, for example that it is ‘noble’ wine. The structure of the sign confirms that ‘noble’ is not used in isolation or in a different typeface or size. This conclusion is valid for average consumers in the EU: either they will understand the expression ‘NOBLE DRAGON’ as a conceptual unit or, even if they do not attribute any meaning to the sign as a whole, given the structure of the sign, in particular the arrangement of the words and the size and typeface in which they are reproduced, the term ‘NOBLE’ will not evoke in their minds anything particular about the wine. The TM is acceptable.

text: ‘Vendange Tardive’ is a French TTW. It is protected only in French. The translation of the TTW into English is not objectionable. See also the EU Commission’s reply to Parliamentary question E-0622/2006, where it Invented EUTM application confirmed that the TTW ‘Vendange Tardive’ is protected only in French for certain wines

text: AXN Late Harvest

text: originating in France. As traditional expressions are only protected in the language in which they are listed, the expression ‘Late Harvest’ is not protected in the EU. ( http:// www.europarl.europa.eu/sides/getAllAnswers.do? reference=E-2006-0622&language=EN )

text: ‘Vino de pago’ is a Spanish TTW. In the absence of EUTM No 17 633 819 the whole reference to ‘vino de pago’, the sign does PAGOS DE GALIR not contain or consist of the TTW as registered.

text: GI/TTW EUTM Limitation

text: RIOJA MARQUÉS DE SAN JUAN 'Rioja' (GI) wine and 'Reserva' RESERVA 2010 RIOJA (TTW) wine (PDO-ES-A0117) RESERVA (invented example)

text: TTW EUTM Explanation

text: ‘Añejo’ is a Spanish TTW for ‘wine’ aged for a minimum period of 24 months and for liqueur wines originating from VINO AÑEJO Malaga PDO. Therefore, it is applied for wines; alcoholic objectionable under

text: Article 7(1)

text: (k)

text: beverages except beers EUTMR . In addition, the sign is objectionable under

text: Article 7(1)

text: (invented example) (b)/(c) EUTMR as it informs the relevant consumer of certain characteristics of the wines (e.g. wine that is aged).

text: EUTM No Comment

text: HEUMILCH is a registered TSG for milk (haymilk) (TSG-AT-01035-AM01). The relevant public will link the term ‘heumilch’ in the sign with the product whose designation is covered by the TSG. The EUTM application is therefore objectionable. As a result, the specification in Class 29 was limited to: Milk and milk products, in particular EUTM No 15 270 184 cheese, cheese preparations, cream cheese, soft

text: cheese, semi-hard cheese, sliced cheese, hard

text: HEUMILCHBARON cheese, cream, milk cream, whey, yoghurt, curds,

text: butter, drinking yoghurt, buttermilk, curd, kefir [milk

text: beverage], sour cream, smetana [sour cream], mixed milk products, fruit yoghurt, milk beverages,

text: milk predominating, semi-prepared and prepared meals based mainly on milk or milk products, dairy

text: foods; edible spreads; all of the aforesaid goods

text: complying with the product specification of the

text: Traditional Speciality Guaranteed ‘Heumilch’.

text: EUTM PVD Goods applied for Outcome Reasoning in Class 31

text: RUBY RUBY Plums; Mirabelle The application All the goods plums; seeds consists of the applied for fall No 16 922 791 for plums and PVD registered for within the genus seeds for Mirabelle Prunus armeniaca ‘Prunus’. The plums; plum trees; L. in France and application was Mirabelle plum Italy. refused.

text: GIOIA Inter alia: flowers GIOIA is a An objection PVD registered was raised, for Dendrobium following which No 17 955 254 Sw., Dianthus L., the application Gerbera jamesonii was limited Bolus ex Hook f. to agricultural and Lilium L. products, not

text: included in other

text: The size and

text: classes; market

text: position of the garden produce, PVD are visually not processed; relevant in the

text: pips; plants; natural

text: sign. The other plants; flowers; verbal elements

text: none of the

text: ‘CREA BONTÀ’

text: aforesaid goods

text: (‘it creates good

text: belonging to the

text: things’) are in a

text: botanical genera

text: secondary position Dendrobium, and their meaning

text: Dianthus, Gerbera

text: neither contradicts and Lilium. nor would be seen as diluting the relevance of the PVD itself.

text: AZAHAR Inter alia: AZAHAR is a The Office objected agricultural PVD registered and proposed products for Gossypium a limitation to No 17 496 019 hirsutum L. in exclude agricultural Spain. products of the genus Gossypium. The additional In the absence element ‘BIO’ is of a reply from visually secondary the applicant, and could in the application any event be was refused an additional for agricultural indication that products. merely reinforces or qualifies the plant variety (organically grown AZAHAR).

text: EMILIA Vegetables, fresh; ‘Emilia’ is a The application Unprocessed PVD registered was objected to vegetables; Root for five varieties, and limited to vegetables [fresh] only one of which fresh vegetables; is for vegetables unprocessed No 17 916 500 (Solanum vegetables; root tuberosum — vegetables [fresh]; potato). None of the

text: aforesaid goods

text: Taking into account

text: belonging to the

text: that potatoes can

text: species Solanum

text: be red, the other tuberosum L. word elements ‘rossa naturale’ (naturally red) were considered to reinforce/qualify the reference to/meaning of the plant variety (colour and growth indicator). Thus, the word ‘EMILIA’ had to be considered an essential element of the EUTM applied for.

text: EUTM PVD Reasoning

text: QUALITY Considering the size of the term ‘quality’ and its position in the overall arrangement of the sign, it cannot be considered an No 17 182 114 essential element of the EUTM.

text: EUTM PVD Reasoning

text: Rubisgold RUBIS The term ‘rubis’ is conjoined with the word ‘gold’. A new unit is No 18 016 793 formed and must be examined as such. No artificial dissection should be applied.

text: CHOICE The verbal elements (‘butcher’s choice’) and the figurative elements (in particular, the knife and the meat cleaver) clearly No 17 144 387 constitute a very specific logical unit with a clear conceptual meaning, which does not reinforce or point to any possible perception of a plant variety within the EUTM.

text: KELP-P-MAX MAX The term ‘max’ was not considered an essential element No 17 979 018 of the EUTM since the overall combination of the word elements create a single unit that cannot be artificially split to highlight the word ‘MAX’ or the possible perception of ‘max’ as a plant variety denomination.

text: The vast majority of cases that come before the Office relate to proof of use for individual marks. As such, this document usually makes reference to identifying the goods or services as ‘originating from a particular undertaking’. Where appropriate, this should also be understood as covering the different essential functions of collective or certification marks mutatis mutandis.

text: Section 4 Absolute grounds for refusal — Chapter 14 Acquired distinctiveness through use (

text: Article 7(3)

text: EUTMR) Section 4, Absolute grounds for refusal, Chapter 14, Acquired distinctiveness through use (

text: Article 7(3)

text: EUTMR), paragraph 6.3). When a mark is objected to because of its verbal element(s), the objection will always state the meaning of that word in the specific language on which the objection is based. In these cases, the relevant territory for filing evidence of acquired distinctiveness through use can be: a) the Member State(s)/territories mentioned in the objection; or b) the Member State(s) where the language at stake in the objection is official; or c) a territory broader than those under a) and b). When an EU national language is official in more than one Member State, acquired distinctiveness through use must be proven for each of the Member States in which that language is official.

text: EU national languages Official in the following Member States

text: Dutch Belgium and Netherlands English Ireland and Malta French Belgium, France and Luxembourg German Belgium, Germany, Luxembourg and Austria Greek Greece and Cyprus Swedish Finland and Sweden

text: Sign Reasoning Case No

text: The combination of the colours green and yellow was found to have 28/10/2009, acquired distinctiveness through use because it was proven that a

text: , significant part of the relevant public perceived it as referring to the Green/Yellow, machines manufactured by a certain company. The evidence comprised EU:T:2009:417 a number of statements from professional associations according to which the combination of colours referred to agricultural machines manufactured by that company and the fact that the company had been using the same combination of colours on its machines consistently in the EU for a considerable time prior to 1996 (§ 36-37).

text: Article 7(3)

text: EUTMR) Examples of evidence that may help to show acquired distinctiveness include, inter alia: sales brochures;

text: ‘… reversing the colour scheme, even if a sharp contrast between the three stripes and the background is preserved, cannot be described as an insignificant variation compared to the registered form of the mark at issue’, § 77.

text: EUTM No 12 442 166 Examples of the sign reflected in some of the evidence of use.

text: Section 4 Absolute grounds for refusal — Chapter 15 European Union collective marks

text: Sign and goods Case no. and reasoning

text: SAN CASCIANO 07/09/2023, R 728/2023‑4, SAN CASCIANO W 1 659 878 The BoA confirmed the refusal of the mark on the basis of

text: Article 7(1)

text: (b) EUTMR. Class 33: ‘Chianti Classico’ (GI) wines The sign ‘SAN CASCIANO’ does not contain any other element than the name of the Italian municipality in which the wine is produced, thus merely describing the geographical origin of the goods ‘Chianti Classico’ (GI) wines for which protection is sought. The sign has no elements which enable the consumer to distinguish the goods of the IR holder’s members from those of other undertakings. Therefore, the relevant public would simply perceive the EU collective mark ‘SAN CASCIANO’ as a sign which is devoid of distinctiveness. (§ 26) […]

text: Article 74(2)

text: EUTMR, second sentence and […]

text: Article 75(2)

text: EUTMR are not a justification for the contested mark to be registered. There is nothing in these provisions which indicates that the IR holder would be exempted from complying with the basic principle under

text: Article 74(1)

text: EUTMR, first sentence, that the EU collective mark for which protection is sought must be capable of distinguishing the goods or services of the members of its association from those of other undertakings. In fact, they only apply once this capability of the EU collective mark has been established (§ 28). […]. As reasoned, whilst

text: Article 74(2)

text: EUTMR constitutes an exception to the absolute ground for refusal under

text: Article 7(1)

text: (c) EUTMR, that circumstance is not such as to call into question the fact that the essential function of an EU collective mark under

text: Article 74(2)

text: EUTMR is to guarantee the collective commercial origin of the goods sold under that trade mark, and not to guarantee their collective geographical origin (§ 31).

text: Sign and goods Case no. and reasoning

text: 26/07/2024, R 1650/2022‑2, CHIANTI GRAN SELEZIONE (fig.) The BoA confirmed the refusal of the mark on the basis of

text: Article 7(1)

text: (b) EUTMR. EUTM 18 441 418 […] the relevant Italian consumer would perceive Class 33: Wine complying with the specifications the sign forming the subject of the application

text: of the Protected Designation of Origin and Chianti

text: merely as an indication of laudatory information that

text: the goods for which protection is sought represent a special selection of wines from the protected designation of origin ‘Chianti’. This perception of the sign by the consumer makes it impossible for the consumer to distinguish the goods bearing the trade mark as originating from the members of the applicant association in relation to goods originating from companies not associated with it. As regards the figurative elements of the sign, […] these are so minimal elements that they are incapable of conferring the minimum degree of inherent distinctiveness on the sign applied for (§ 20).

text: Section 4 Absolute grounds for refusal — Chapter 16 European Union certification marks

text: EUTM No Sign Goods and services Reasoning

text: 596 917 In particular, the rules of use clearly state that the certification mark intends to certify a geographical origin, namely that the goods in Classes 29, 30 and 31 question originate from animals that have been bred according to certain specifications, among which is the necessary link to Denmark or the Danish area.

text: 277 245 The sign contains a verbal expression that gives direct information about the geographical origin of the goods (Styrian pumpkin oil). It reproduces a registered Class 9: oils and fats PGI ‘Steirisches Kürbiskernöl’ for edible oil. The regulations of use explicitly mention that the goods are certified in relation to their geographical origin.

text: 868 687 The following elements confirm that the certification mark is intended to certify the geographical origin of the goods applied for: 1. the representation of the sign contains a registered PDO for wines,‘Vinho do Porto’ (PDO-PT- A1540), in addition to other words; 2. the regulations of use filed clearly mention that: ‘“Vinagre de Vinho do VINAGRE DE VINHO Porto” is produced Class 30: wine vinegar DO PORTO exclusively from wine under the Protected Designation of Origin’. Both, the representation of the sign applied for and the regulations of use, clearly indicate that the certification mark is intended to certify vinegar that is made exclusively from wine protected under the PDO ‘Vinho do Porto’ (PDO-PT-A1540), that is to say that that the vinegar’s main ingredient is the PDO ‘Vinho do Porto’.

text: EUTM No Reasoning (under

text: Article 83

text: EUTMR Sign Goods and services and the prohibition of

text: geographical origin)

text: 870 740 The geographical reference in the sign (‘German’) read in combination with the other word elements and, in particular, the overall expression ‘certified by the German cardiac society’ will Class 44 not be perceived as an indication of the geographical origin of the goods and services but as an indication of the certifier itself. There was no element in the regulations of use that would suggest otherwise.

text: Sign and goods and services Case No

text: MANUKA HONEY 27/10/2021, R 1410/2019‑5, Manuka honey, § 20, 21, 24, 27, 37 for honey

text: Reasoning: […] according to

text: Article 83(3)

text: EUTMR, Chapters I to VII and IX to XIV of the EUTMR will apply to EU certification marks to the extent that this section does not provide otherwise. Chapter VIII, Section 2 (EU certification marks) does not contain any lex specialis to

text: Article 7

text: EUTMR of Chapter II of the EUTMR. In particular, whereas

text: Article 74(2)

text: EUTMR includes an explicit derogation from

text: Article 7(1)

text: EUTMR for EU collective marks, such a derogation does not exist for EU certification marks (§ 20). Finally,

text: Article 4

text: (a),

text: Article 7(1)

text: (b) and Articles

text: and

text: EUTMR all refer to the distinguishing function as the key element for defining EU trade marks, be it ordinary trade marks, collective marks or certification marks (§ 21). When assessing the distinctive character of an EU certification mark under

text: Article 85(1)

text: EUTMR in combination with

text: Article 7(1)

text: (b) EUTMR, one also has to bear in mind the specific function of those types of marks in comparison with ordinary trade marks (§ 24). From the perspective of the English-speaking public, the term ‘Manuka honey’ simply refers to a type of honey, like ‘Dandelion honey’, ‘Pinetree honey’ or ‘Acacia honey’. As a purely generic indication, it does not fulfil the primary function of a certification mark, namely to distinguish certified honey from honey that is not certified. Thus, the examiner rightly refused protection for the mark pursuant to

text: Article 85(1)

text: EUTMR in combination with

text: Article 7(1)

text: (b) and

text: Article 7(2)

text: EUTMR in relation to the goods applied for, namely ‘honey’ (§ 37).

identifier: Trade mark guidelines, Part B Examination, Section 4 Absolute grounds for refusal

sprak: en

title: Trade mark guidelines, Part B Examination, Section 4 Absolute grounds for refusal

version: Edition 2026

serie: varumarke

text: Part B Examination Section 4 Absolute grounds for refusal Part B Examination Section 4 Absolute grounds for refusal Chapter 1 General principles

text: 1 Reasoned Objection

text: Any one of the grounds listed in Article 7(1) EUTMR is sufficient for the refusal of a European Union trade mark. For the sake of sound administration and economy of proceedings, the Office will raise any objections to registration of the sign under Article 7(1) EUTMR as soon as possible and preferably all at once. This is particularly important in those cases where the applicant cannot overcome the objection by demonstrating that the sign has acquired distinctive character through use (for instance, when Article 7(1)(e) EUTMR is invoked). Each of the grounds for refusal listed in Article 7(1) EUTMR is independent and must be examined separately. Therefore, when various absolute grounds for refusal are invoked, a reasoned objection will be issued, specifying the individual grounds for refusal and providing clear and distinct reasoning for each ground. Even when some grounds for refusal overlap, each ground for refusal must be reasoned in the light of the general interest underlying each of them. For example, where a word mark is found to have a semantic meaning that gives rise to an objection under both Article 7(1)(b) and (c) EUTMR, the notification of grounds for refusal should deal with each of those grounds in separate paragraphs. In such a case, it will be clearly indicated whether the lack of distinctiveness arises out of the same, or different, considerations from those that lead to the mark being deemed descriptive. Occasionally, arguments put forward by the applicant, or a restriction (partial withdrawal) of the list of goods and services, will lead to the application of other grounds for refusal. In these cases, the party will always be given the opportunity to comment thereon.

text: 2 Dialogue with the applicant

text: During examination proceedings, the Office will seek a dialogue with the applicant. At all stages of the proceedings, the observations submitted by the applicant will be considered carefully. The Office will likewise consider, of its own motion, new facts or arguments that plead in favour of acceptance of the mark. The application can only be refused if the Office is convinced that the objection is well founded at the point in time when the decision is taken. If several grounds for refusal are raised, the applicant must overcome all of them, since a refusal can be based on a single ground for refusal (19/09/2002,

text: P, Companyline, EU:C:2002:506, § 28). No observations submitted by the applicant

text: Where the applicant has not submitted any observations, if the application is to be refused, the Office will send a refusal letter to the applicant, which will include the original reasoning and ground(s) of the objection letter. Observations submitted by the applicant

text: If the applicant contests the reasons given in the original notification, the refusal will first provide the original reasoning given, and then address the applicant’s arguments. Where the Office needs to provide new facts or arguments to sustain a refusal, the applicant must be given the opportunity of commenting on these before a final decision is taken. Restriction of goods and services

text: Where the applicant tries to overcome the objection by restricting the list of goods and services, it is possible that the restriction may give rise to a new ground for refusal, for example, deceptiveness in addition to descriptiveness. In this case, another objection letter will be issued to give the applicant the opportunity to comment on all the grounds for refusal found pertinent. Proof of acquired distinctiveness

text: The applicant has the right to claim that its mark has acquired distinctiveness through use (Article 7(3) EUTMR) and to submit relevant proof of this. The applicant must make its claim under Article 7(3) EUTMR either together with the application or, at the latest, in reply to the Office’s first objection (Article 2(2) EUTMIR). The claim can no longer be made for the first time at the appeal stage (Article 27(3)(a) EUTMDR). The claim of acquired distinctiveness through use can be made either as a principal claim or as a subsidiary claim (Article 2(2) EUTMIR). The applicant must, however, clearly and precisely specify the type of claim, either together with the application or, at the latest, in reply to the Office’s first objection. Where the applicant has made a principal claim, the Office will take one (single) decision both on the mark’s inherent distinctiveness and, where there is no inherent distinctiveness, on the submission of acquired distinctiveness through use. Where the applicant has made a subsidiary claim, the Office will take a first decision on the mark’s inherent distinctiveness and then, once that decision (finding a lack of inherent distinctiveness) has become final, the applicant will be invited to submit its evidence on acquired distinctiveness through use. For further information on acquired distinctiveness through use, please see the Guidelines, Part B, Examination, Section 4, Absolute grounds for refusal, Chapter 14, Acquired distinctiveness through use (Article 7(3) EUTMR).

text: 3 Decision

text: After the dialogue with the applicant has taken place, the Office will take a decision if it considers that the objection is well founded, despite the facts and arguments submitted by the applicant. The decision will include the original objection, summarise the applicant’s arguments, address the applicant’s arguments and submissions, and give reasons and a detailed explanation as to why they are not convincing. The objection can be waived in part if the Office considers that (i) some of the grounds have been overcome or (ii) all grounds have been overcome for some of the goods and services. The decision will state that the application has been refused, either partly or in its entirety, indicating the goods and services rejected. If a subsidiary claim of acquired distinctiveness through use has been made, the first decision will declare that the mark lacks inherent distinctiveness. The Office will only decide whether to refuse the application after it has examined the subsidiary claim and evidence of use. The above, obviously, applies only to those cases where a claim under Article 7(3) EUTMR can be made. When an application is refused on the basis of a ground for refusal that cannot be overcome by means of Article 7(3) EUTMR (e.g. a refusal under Article 7(1)(e)(i) to (iii) EUTMR), a subsidiary claim of acquired distinctiveness will fail.

text: 4 European criteria

text: Article 7(1) EUTMR is an EU provision and has to be interpreted on the basis of a common European standard. For example, it would be incorrect to apply different standards of distinctiveness based on the particularities of each EU Member State. However, Article 7(2) EUTMR excludes an application from registration if a ground for refusal pertains only to part of the EU.

text: 4.1 Languages

text: 4.1.1 Glossary

text: The following expressions will be used in the Guidelines and should be understood according to the definitions provided below.

text: EU national languages

text: EU national languages comprise two different groups.

text: 1. The Treaty languages, also known as ‘official EU languages’, are those mentioned in Regulation No 1( ). This states that the EU institutions have 24 official and working languages: Bulgarian, Croatian, Czech, Danish, Dutch, English, Estonian, Finnish, French, German, Greek, Hungarian, Irish, Italian, Latvian, Lithuanian, Maltese, Polish, Portuguese, Romanian, Slovak, Slovenian, Spanish and Swedish. English is an official EU language, despite the United Kingdom having left the EU. English is one of Ireland’s and Malta’s official languages and remains listed as such in Regulation No 1.

text: 2. Luxemburgish and Turkish. In addition to the Treaty languages, there are two other official languages at national level in the EU: Luxemburgish (in Luxembourg) and Turkish (in Cyprus).

text: EU regional languages

text: An EU regional language is one that is not an EU national language but is traditionally used by people of a particular region in the EU. It may have constitutional recognition and be co-official in that area with the official language of the State (e.g. Basque, Catalan, Gallego or Valencian, which are co-official in their regions with Spanish). Other regional languages do not have that status, but are used by a relevant number of people in those regions (e.g. Alsatian, Breton, Neapolitan, Occitan and Sicilian). For the purposes of these Guidelines, ‘EU regional languages’ also include dialects. A dialect is the form of a language that is spoken in one area of the EU with some grammar, words and/or pronunciation that may be different from other forms of the same language or a language that is spoken in a particular area, which can be a village, a city, a region, etc. For example, in 25/01/2018,

text: , EL TOFIO El sabor de CANARIAS (fig.), EU:T:2018:31, the General Court dealt with the alleged descriptiveness of the word ‘tofio’, formerly used in a dialect spoken in Lanzarote and Fuerteventura (Canary Islands).

text: Non-EU languages

text: This expression refers to languages that are neither EU national languages nor EU regional languages (e.g. Chinese, Hindi, Arabic or Russian).

text: 4.1.2 Relevant languages in AG examination

text: The Office can raise objections on the basis of EU national languages and also, under specific circumstances, on the basis of a regional language or a non-EU language. When the objection is based on a regional language or a non-EU language, the Office will explain in the objection letter why the language at issue is relevant.

text: The Office may become aware of the meaning of a word contained in a mark due either to the language check carried out during the examination proceedings or to evidence submitted in third-party observations.

text: 4.1.2.1 EU national languages

text: Regardless of the size or population of the respective country, the meaning of any word in any EU national language will be relevant for the absolute grounds examination. In relation to official EU languages, see 03/07/2013,

text: , Neo, EU:T:2013:343, § 57. The General Court stated that since Turkish is an official language in Cyprus, it is understood and spoken by part of the population of Cyprus (13/06/2012,

text: , Hellim, EU:T:2012:292, § 38). The same applies to Luxembourgish which has the status of an official language in Luxembourg.

text: 4.1.2.2 EU regional languages and non-EU languages

text: The examination of absolute grounds is not limited to EU national languages (13/12/2018,

text: , PLOMBIR, EU:T:2018:941, § 53; 13/09/2012,

text: , Espetec, EU:T:2012:424, § 35-36). The existence of EU regional languages as well as the presence of minorities in the EU and in specific Member States speaking a non-EU language might, under the conditions mentioned below, justify the refusal of marks containing terms in languages other than EU national languages (e.g. Basque, Catalan, Chinese or Russian). The Office will raise an objection only when there is convincing evidence that a given term has a meaning in an EU regional language or a non-EU language and is understood by a non-negligible part of the relevant public in at least a part of the European Union (06/10/2017,

text: , KARELIA, EU:T:2017:702, § 27; 25/11/2015,

text: , RACE GTP, EU:T:2015:884, § 29; 25/11/2015,

text: , START UP INITIATIVE (fig.), EU:T:2016:747, § 55). Words that are not commonly used (i.e. obsolete and extinct words or spoken only in remote parts of the country of origin of the language, very specific or highly technical terms) are unlikely to be understood by a non-negligible part of the relevant EU public and so will not be objected to. For example, the word ‘tofio’ is used in a dialect spoken on two of the Canary Islands. It refers to a type of bowl used in the past to collect goat milk. The General Court found that it had not been proved that the word ‘tofio’ had a clear meaning for a non-negligible part of the relevant public (25/01/2018,

text: , EL TOFIO El sabor de CANARIAS (fig.), EU:T:2018:31, § 48). In order to identify whether there is a non-negligible part of the relevant public who understands a term which is not in an EU national language, a case-by-case analysis of the factual situation must be made for that language. The analysis must evaluate the number of people who speak the language within the EU and their geographical spread.

text: For example, the application for the word mark SHAKAHARI (EUTM No 17 680 521) was refused (before the UK left the EU) for, among other services, restaurant services in Class 43. ‘Shakahari’ is the transliteration of a term in Hindi meaning ‘vegetarian’. The relevant public included the UK Hindi-speaking population and the Indian and Nepali population in the EU, as well as consumers interested in Indian food or vegetarian food.

text: Regarding Russian, it is a well-known fact, confirmed by the General Court, that a significant proportion of Baltic States nationals know Russian or speak it as its mother tongue (19/07/2017,

text: , медве́дь (fig.), EU:T:2017:527; 13/12/2018,

text: , PLOMBIR, EU:T:2018:941). Therefore, it is considered that Russian is understood by a non-negligible part of the relevant public in at least a part of the European Union.

text: Table 3: Applications refused

text: 4.2 The baseline

text: The baseline is the ordinary understanding of the relevant public of the word in question. It can be corroborated by dictionary entries, examples of the use of the term in a descriptive manner found on internet websites, or it may clearly follow from the ordinary understanding of the term. It is not necessary for the Office to prove that the word is the subject of a dictionary entry in order to refuse a sign. In particular, for composite terms, dictionaries do not mention all possible combinations. What matters is the ordinary and plain meaning. For example, terms used as specialised terminology to designate the respective relevant characteristics of the goods and services are considered descriptive. It is not necessary to demonstrate that the meaning of the term is immediately apparent to the relevant consumers of the goods and services. It suffices that the term is meant to be used, or could be understood by part of the relevant public, as a description either of the goods or services for which protection is sought or of a characteristic of the goods and services (17/09/2008,

text: , Pranahaus, EU:T:2008:381, § 36; 18/11/2015,

text: , TRILOBULAR, EU:T:2015:858, § 50). An internet search is also a valid means of evidence of a meaning, in particular for new terms, technical jargon or slang words. However, the evidence should be carefully assessed to find out how the word is actually used, in particular in relation to descriptiveness. This is because often the difference between descriptive use and trade mark use on the internet is vague and the internet contains a vast amount of unstructured and unverified information or statements. Article 7(1) EUTMR also applies to transliterations (transfers of a word from the alphabet of one language to another). Transliterations into EU alphabets are treated in the same way, for the purpose of examining the absolute grounds for refusal, as words written in other EU original alphabets when the use of both characters is usual in a Member State. This would apply in relation to the three alphabets of the official EU languages – Latin, Cyrillic and Greek. It particularly applies to transliterations into Latin characters of Cyrillic (01/09/2017, R 1177/2017‑4, MALKA) and Greek (16/12/2010,

text: , Chroma, EU:T:2010:537, § 34) because Bulgarians and Greeks are familiar with Latin characters. Transliterations of words in non-EU alphabets into EU alphabets are treated in the same way, for the purpose of examining the absolute grounds for refusal, as words written in those non-EU languages when it can be established that a non-negligible part of the relevant public in at least a part of the European Union is accustomed to using both types of characters.

text: 4.3 The relevant part of the EU

text: Where the objection is not based on the meaning of a word, the ground for refusal will normally pertain to the European Union as a whole. However, the relevant public's perception of the sign, the practice in trade, or the use of the goods and services claimed may be different in some parts of the European Union. The Office’s objections for signs containing verbal elements will always identify the language in which the sign is meaningful. Where the objection is based on the meaning of a word, the ground for refusal generally applies to part of the EU only (Article 7(2) EUTMR). The relevant part of the EU will depend on the language, terms used and goods and services. The part of the EU affected by the objection is relevant in relation to the possibility for the applicant to file evidence to support its claim for acquired distinctiveness through use under Article 7(3) EUTMR (see the Guidelines, Part B, Examination, Section 4, Absolute grounds for refusal, Chapter 14, Acquired distinctiveness through use (Article 7(3) EUTMR), paragraph 6 and in particular 6.2 Language area on page 735). The explicit mention of a territory or of an EU national language in the refusal will also affect the applicant’s right to request the conversion of the EUTM application into one or more national application(s). The conversion is precluded (i) if a Member State is expressly indicated in the Office decision, for that Member State (Article 140(3) EUTMR in combination with Article 139(2)(b)EUTMR), (ii) if the language of a Member State is mentioned, for all the Member States in which that language is one of the official languages (Article 140(4) EUTMR). (see the Guidelines, Part E, Register operations, Section 2, Conversion, Chapter 4, Grounds precluding conversion, paragraph 4.2). The Office is not obliged to indicate the relevant part of the territory in its refusal (confirmed by the General Court, (07/07/2021,

text: , YOUR DAILY PROTEIN (fig.), EU:T:2021:421, § 60-62 and 09/03/2022,

text: , Rugged, EU:T:2022:116)). However, when the territory is specifically relevant for the objection (e.g. for non-EU national languages or when the specific situation in a Member State is the basis of an objection under public policy and morality), its specific indication will be included in the decision.

text: 4.3.1 Relevant territory and objections based on EU national languages

text: The ground for refusal will apply, at least, in all the Member States where the language giving rise to the objection is official. Some languages are official in more than one Member State (see the Guidelines, Part B, Examination, Section 4, Absolute grounds for refusal, Chapter 14, Acquired distinctiveness through use (Article 7(3) EUMR), paragraph 6.2). Under certain circumstances, the ground for refusal can also apply in a Member State where the language is not an official language.

text: The understanding of languages is not strictly limited by geographical borders. It may well be that, for historical, cultural or cross-border market reasons, certain (usually elementary) vocabulary of a given language may spread and be widely understood by the general public in other Member States, particularly those with contiguous land borders (e.g. ‘bon appétit’, ‘ciao’, ‘siesta’, ‘fiesta’, ‘merci’, ‘voilà’). Some EU national languages are widely studied and spoken by the public not only in the Member State where it is official (e.g. English). Therefore, the following principles apply. Very basic English terms can be understood in the whole of the EU. Some examples

text: of such terms are: ○ ‘forever’ and numbers below 10 (16/01/2014,

text: , Forever, EU:T:2014:10, § 68); ○ ‘baby’ (05/07/2012,

text: , Mc.Baby, EU:T:2012:346); ○ primary colours (27/06/2013,

text: , MOL Blue Card, EU:T:2013:336; 28/09/2011,

text: , Victory Red, EU:T:2011:543); ○ ‘champion’ (01/06/2016,

text: , CHEMPIOIL / CHAMPION et al., EU:T:2016:330). English is widely understood in some Member States and therefore in those

text: territories (such as, in particular, Denmark, Finland, the Netherlands and Sweden) the public’s understanding of English expressions is broader than basic terms (20/01/2021,

text: , It’s like milk but made for humans, EU:T:2021:21, § 35). Specific knowledge of English can be acknowledged for certain professionals. The

text: Court has ruled that the professional public is in a position to understand certain English terms that may form part of their professional vocabulary (29/03/2012,

text: , 3D eXam, EU:T:2012:179, § 26). In addition: ○ English is very often used in commercial communications (09/03/2022,

text: , Rugged, EU:T:2022:116, § 56). ○ The use of English is common in the financial, electronics and telecommunications sectors (26/09/2012,

text: , Citigate, EU:T:2012:473, § 41). ○ English terms in the medical field are also likely to be understood because of the international influence in the sector (29/03/2012,

text: , 3D eXam, EU:T:2012:179, § 26). For example, the EU professional public in the medical sector (patient safety field) has a specific practical interest in goods with characteristics of solidity, robustness or durability and may therefore understand the meaning of ‘rugged’ as ‘strong and designed to last a long time, even if treated roughly’ (09/03/2022,

text: , Rugged, EU:T:2022:116, § 56-58).

text: 4.3.2 Relevant territory and objections based on EU regional languages and non-EU languages

text: Where the objection concerns EU regional languages that have constitutional recognition and/or are co-official, in a particular area, with the national official language

text: of the State, it will apply always, by default, at least to the Member State where this language is recognised/official. For EU regional languages that do not have an official status in the particular State concerned and for non-EU languages, the objection will clearly state which language is concerned and will identify (at least) part of the relevant territory. As regards Russian, the General Court has confirmed that the relevant consumers are, at least, the inhabitants of the Baltic States (Estonia, Latvia and Lithuania) (19/07/2017,

text: , PLOMBIR, EU:T:2018:941) .

text: 5 Scope of Objections to the Goods and Services

text: Almost all absolute grounds for refusal, and in particular the most frequent ones of lack of distinctiveness, descriptiveness, genericness and deceptiveness, have to be assessed with respect to the goods and/or services for which protection is sought. If an objection is raised, the Office must state specifically which ground (or grounds) for refusal apply to the mark in question, for each of the goods or services for which protection is sought. In principle, an examination of the absolute grounds for refusal must be carried out in relation to each of the goods and services for which protection is sought, and it is necessary to state reasons in respect of each of those goods or services. However, the competent authority may use only general reasoning for all of the goods and services concerned where the same ground of refusal is given for a category or group of goods or services (18/03/2010,

text: P, P@yweb card / Payweb card, EU:C:2010:153, § 37 and § 38). Therefore, for the same ground for refusal it is sufficient to provide general reasoning for one or more homogenous categories of goods and/or services, that is, groups of goods and/or services that have the same sufficiently direct and specific link to the sign. Criteria to establish this link can be, in particular, their characteristics, their essential qualities and their intended purposes (18/03/2010,

text: P, P@yweb card / Payweb card, EU:C:2010:153, § 46). The link must be specific and cannot be too general or abstract (18/03/2016,

text: , WINNETOU, EU:T:2016:166, § 70‑72). For the analysis of the homogeneous nature of the relevant goods and/or services, the specificity of the mark applied for and its perception by the relevant public should be taken into account (03/12/2019,

text: , DEVICE OF A CHECKERED GINGHAM PATTERN (fig.), EU:T:2019:830, § 62). Therefore, goods and/or services might form a homogeneous group for one sign (which describes a common characteristic) while those same goods and/or services might not form such a group in relation to another sign. The placement of the goods and services in one or more groups or categories must be carried out in particular on the basis of the characteristics that are common to

text: them and that are relevant for the analysis of whether or not a specific absolute ground for refusal may apply to the sign applied for in respect of those goods

text: and services. Therefore, the assessment must be carried out in concreto for the examination of each application and, as the case may be, for each of the different absolute grounds for refusal that may apply (25/01/2017,

text: P, deluxe (fig.), EU:C:2017:41, § 33). Factors for homogenous groups can be, for example: that the goods are composed of the same ingredients or material (same fragrance

text: in 12/12/2019,

text: , SHAPE OF A FLOWER (3D), EU:T:2019:849; 11/04/2019,

text: , same area of paints, coatings, adaptable materials in ADAPTA POWDER COATINGS (fig.), EU:T:2019:245); that the goods or services have the same intended purpose (to give an alarm signal

text: in 19/12/2019,

text: , ring (fig.), EU:T:2019:871; used in recycling and waste handling in 04/07/2019, R 1441/2018‑5, Ecotec; related to cleaning, freshening and washing in 13/08/2019, R 881/2019‑5, Botanical origin). However, the mere fact that the relevant goods and services may be within the same class of the Nice Agreement is not sufficient in itself for a finding of homogeneity (17/10/2013,

text: P, Zebexir, EU:C:2013:672, § 40). The fictitious sign ‘Gourmet Dinner’, for example, could be considered laudatory and lacking distinctiveness for a variety of goods in Class 30, like pastries, cakes and ice creams, reasoning that all these goods are suitable to be served at a high-class dinner event, while this reasoning would not apply to chewing gum in the same class. Overall, despite having differences, the goods and services could have a common characteristic relevant to the analysis that the Office has to carry out, that could justify their placement within a single homogenous group and the use by the Office of general reasoning in relation to them (22/03/2018,

text: , MOBILE LIVING MADE EASY, EU:T:2018:162, § 31 and the case-law cited therein). While forming homogeneous groups of goods and/or services allows a general, relatively short and concise reasoning, it is still necessary to give a clear picture of the nature of the goods and/or services in the decision. As regards descriptiveness, an objection will apply not only to those goods and/or services for which the term(s) making up the trade mark applied for is/are directly descriptive, but also to the broad category that (at least potentially) contains an identifiable subcategory or specific goods/services for which the mark applied for is directly descriptive. In the absence of a suitable restriction by the applicant, the descriptiveness objection necessarily affects the broad category. For example, ‘EUROHEALTH’ is to be refused for ‘insurance’ as a whole and not only for ‘health insurance’ (07/06/2001,

text: , EuroHealth, EU:T:2001:151, § 33). An objection also applies to those goods and/or services that are directly linked to those for which the descriptive meaning pertains. Furthermore, if the descriptive meaning applies to an activity involving the use of several goods and/or services mentioned separately in the specification, then the objection applies to all of them (20/03/2002,

text: , Tele Aid, EU:T:2002:79, § 38‑39 (relating to a number of

text: goods and services offered in conjunction with, or applied to, remote assistance to car drivers)). Some goods and services are what can be referred to as auxiliary goods and/or services in the sense that they are meant to be used with, or support the use of, the main goods or services. Typically, this covers paper and instruction manuals for the goods to which they belong or which are packed with them. These auxiliary goods and/or services are by definition intended to be used and sold together with the main product (e.g. vehicles and instruction manuals). It follows that if the sign is found to be descriptive of the main goods, logically it is also descriptive of the auxiliary goods, which are so closely related. A different situation is that of broad categories of goods or stand-alone services that can support or be used by any other business as well, such as computer systems, advertising, transport and training. These services are defined as offering/rendering the services to third parties and therefore cannot be considered auxiliary services with reference to the goods and/or services. Advertising, for example (as well as the other previously mentioned services), is considered to be a fully-fledged service provided to third parties, and not just an ancillary vehicle to promote ‘main’ products. Further examples:

text: 6 Timing of Objections

text: Objections should be raised as early as possible. In the majority of cases, the Office raises its objection ex officio before the publication of the EUTM application. The Office can reopen the examination of absolute grounds on its own initiative at any time before registration (Article 45(3) EUTMR), and in particular, upon receiving observations from third parties relating to the existence of an absolute ground for refusal or following an interim decision from the Boards of Appeal proposing to reexamine the contested EUTM application on absolute grounds. Observations from third parties must be submitted before the end of the opposition period or before the final decision on an opposition is taken when an opposition has been filed (Article 45(2) EUTMR). The Office can then decide to reopen the examination procedure as a result of these observations. See the Guidelines, Part B, Examination, Section 1, Proceedings, paragraph 3.1. In the case of international registrations designating the EU, the Office can raise an objection as long as the opposition period (one month after republication) has not started (Article 193(7) EUTMR) and any interim status declaration previously sent would be revoked.

text: 7 Disclaimers

text: Pursuant to Regulation No 2015/2424 amending Regulation No 207/2009 on the Community trade mark, it is no longer possible to file a disclaimer to indicate that protection is not requested for a specific element of a mark.

text: objection. If the applicant’s disclaimer does not overcome the ground for refusing registration,

text: the application must be refused to the extent that is required. Where the applicant has made a disclaimer of a non-distinctive element in its

text: application, the disclaimer will stay even if the Office does not consider it necessary.

text: Part B Examination Section 4 Absolute grounds for refusal Chapter 2

text: 1 General Remarks

text: Article 7(1)(a) EUTMR reflects the Office’s obligation to refuse signs that do not conform to the requirements of Article 4 EUTMR. As from 01/10/2017, according to Article 4 EUTMR, a European Union trade mark may consist of any signs, in particular words, including personal names, or designs, letters, numerals, colours, the shape of goods or of the packaging of goods, or sounds, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings and being represented on the Register of European Union trade marks (the Register) in a manner that enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor. According to Article 39(2)(a) EUTMIR, ‘Title II [application procedure] shall not apply to applications for an EU trade mark entered before 01/10/2017, as well as to international registrations for which the designation of the Union was made before that date’. To be capable of constituting a trade mark for the purposes of Article 4 EUTMR, the subject matter of an application must satisfy three conditions: 1. it must be a sign; 2. it must be capable of distinguishing the goods or services of one undertaking from those of others;

text: 3. it must be capable of being represented on the Register in a way that allows the competent authorities and the public to determine the clear and precise subject matter of protection.

text: 1.1 Signs

text: Article 4 EUTMR and Article 3(3) EUTMIR, read in conjunction, draw up a nonexhaustive list of signs that may constitute an EUTM: word marks, figurative marks, shape marks, position marks, pattern marks, single colour and combination of colour marks, sound marks, motion marks, multimedia marks, and hologram marks. Where the mark does not fall within the definition of any of the specific types of marks listed in Article 3(3) EUTMIR, it can qualify as an ‘other’ mark provided for by Article 3(4) EUTMIR, provided it complies with the representation requirements set out in Article (3)1 EUTMIR. Within this context, abstract concepts and ideas or general characteristics of goods are not specific enough to qualify as a sign, as they could apply to a variety of different manifestations (21/04/2010,

text: , Spannfutter, EU:T:2010:153, § 25). For this reason, the Court rejected, for example, an application for a ‘transparent collecting bin forming part of the external surface of a vacuum cleaner’, as the subject matter was not a particular type of bin, but rather, in a general and abstract manner, all conceivable

text: shapes of a transparent bin with a multitude of different appearances (25/01/2007,

text: , Transparent bin, EU:C:2007:51, § 35, 37).

text: 1.2 Distinguishing character

text: Article 4(a) EUTMR refers to the capacity of a sign to distinguish the goods of one undertaking from those of another. Unlike Article 7(1)(b) EUTMR, which concerns the distinctive character of a trade mark with regard to specific goods or services, Article 4 EUTMR is merely concerned with the abstract ability of a sign to serve as a badge of origin, regardless of the goods or services. Only in very exceptional circumstances is it conceivable that a sign could not possess even the abstract capacity to distinguish the goods or services of one undertaking from those of another. An example for the lack of abstract capacity in the context of any goods or services could be the word ‘Trademark’.

text: 1.3 Representation on the Register

text: According to Article 4(b) EUTMR, the sign applied for needs to be capable of being represented on the Register, in a manner that enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor. Regarding the representation of the sign, Article 3(3) EUTMIR lays down a nonexhaustive list of trade marks together with their definition and representation requirements. Article 3(4) EUTMIR deals with ‘other’ types of marks. For more information in this regard, see the Guidelines, Part B, Examination, Section 2, Formalities. Article 3(1) EUTMIR states that the trade mark can be represented in any appropriate form using generally available technology, as long as it can be reproduced on the Register in a clear, precise, self-contained, easily accessible, intelligible, durable and objective manner so as to enable the competent authorities and the public to determine with clarity and precision the subject–matter of the protection afforded to its proprietor. The criteria listed by the EUTMIR are identical to those established in the Sieckmann case (12/12/2002,

text: , Sieckmann, EU:C:2002:748) with respect to the requirement for a clear and precise acceptable ‘graphical’ representation under the previous wording of the EUTMR. Article 3(9) EUTMIR clarifies that the filing of a sample or a specimen does not constitute a proper representation of a trade mark. The reason is that these cannot be clearly and precisely represented and are not generally available for inspection on the Register by means of commonly available technology. For example, a sample of a scent would not be a durable and stable representation of a trade mark, thereby not complying with the clarity and precision requirements.

text: Article 3(2) EUTMIR makes clear that the subject matter of the registration is defined by the representation of the mark. In the limited number of cases where the representation is accompanied by a description (see below), the description must accord with the representation and must not extend its scope. Whenever the representation of the sign does not enable the competent authorities (namely trade mark offices and courts) and competitors to determine the clear and precise subject matter of the protection afforded to its proprietor, the mark has to be refused for not complying with Article 7(1)(a) EUTMR. This is an objective assessment to be carried out by applying the criteria listed in Article 3(1) EUTMIR, for which no particular consumer segment has to be taken into account. Where the applicant has duly complied with the formalities requirements (see the Guidelines, Part B, Examination, Section 2, Formalities, paragraph 9) — that is, the filing of a representation of the sign in accordance with the corresponding requirements of Article 3(1) and (3) EUTMIR and correct indication of the type of mark — the representation of the sign on the Register should enable the competent authorities and the public to determine the clear and precise subject matter of protection of the mark. Nevertheless, issues in this respect are more likely to arise pursuant to Article 31(1)(d) EUTMR where the mark applied for does not qualify as one of the types of marks listed in Article 3(3) EUTMIR but as an ‘other’ type of mark (Article 3(4) EUTMIR), for which there are no specific explicit rules on representation other than that of complying with the standards set out in Article 3(1) EUTMIR.

text: Assessing whether the representation of the sign enables the competent authorities and the public to determine the clear and precise subject matter of protection of the mark seems rather straightforward for traditional types of marks (word and figurative marks). To the extent that these marks have passed the Office’s formalities examination, they can, in general, be assessed directly under the other grounds of Article 7 EUTMR as there should not be any issues under Article 7(1)(a) EUTMR. A closer examination of the requirements under Article 7(1)(a) and Article 4 EUTMR might, however, be needed in the case of less ‘traditional’ signs. Although graphical representation as a general requirement has been abolished, the existing case-law dealing with the graphical representation of signs is still relevant in some cases for understanding the requirement that signs have to be capable of being adequately represented on the Register.

text: 2.1 Shape marks

text: According to Article 3(3)(c) EUTMIR, a shape mark is a trade mark consisting of, or extending to, a three-dimensional shape, including containers, packaging, the product itself or its appearance. The term ‘extending to’ means that these marks cover not only the shapes per se, but also shapes that contain word or figurative elements, labels, etc. The representation of shape marks requires one of the following to be submitted: a graphic reproduction of the shape, including computer-generated imaging;

text: a photographic reproduction.

text: The graphic or photographic reproduction may contain different views. Where the representation is not provided electronically, it may contain up to six different views.

text: 2.2 Position marks

text: According to Article 3(3)(d) EUTMIR, a position mark is a trade mark consisting of the specific way in which the mark is placed on or affixed to the goods. The abovementioned article stipulates the following mandatory and optional representation requirements for position marks. An appropriate identification of the position of the mark and its size or proportion with respect to the relevant goods (mandatory). A visual disclaimer of those elements that are not intended to form part of the subjectmatter of the registration (mandatory). The EUTMIR gives preference to broken or dotted lines. A description explaining how the sign is affixed to the goods (optional). The representation should by itself clearly define the position of the mark as well as its size or proportion with respect to the goods. Therefore, according to Article 3(2) EUTMIR, the description may only serve explanatory purposes; it cannot serve to substitute visual disclaimers. An objection under Article 7(1)(a) EUTMR may be raised for those goods on which the positioning of the mark is unclear. For example, if a position mark is applied for in respect of clothing, footwear and headgear, but the representation identifies the position of the mark on footwear only, an objection should be raised for clothing and headgear.

text: 2.3 Pattern marks

text: The article requires that pattern marks ‘be represented by submitting a reproduction showing the pattern of repetition.’ Descriptions detailing how its elements are repeated in a regular pattern are allowed for this type of mark. For other cases where the EUTMIR allows for the possibility of adding descriptions, the description must accord with the representation and must not extend its scope.

text: 2.4 Colour marks

text: According to Article 3(3)(f) EUTMIR, colour marks are either single colour marks without contours or a combination of colours without contours. 1. Trade marks consisting exclusively of a single colour (without contours) require: ○ a reproduction of the colour (mandatory); ○ a reference to a generally recognised colour code (mandatory). 2. Trade marks consisting exclusively of a combination of colours (without contours) require: ○ a reproduction of the colour combination that shows the systematic arrangement of the colour combination in a uniform and predetermined manner (mandatory); ○ a reference to a generally recognised colour code (mandatory); ○ a description detailing the systematic arrangement of the colours (optional). For colour combinations, the EUTMIR has applied the case-law according to which the representation ‘must be systematically arranged by associating the colours concerned in a predetermined and uniform way’, as the Court of Justice stated that the mere juxtaposition of two or more colours, without shape or contours, or a reference to two or more colours ‘in every conceivable form’, did not meet the requisite standards of precision and uniformity (24/06/2004,

text: , Blau/Gelb, EU:C:2004:384, § 33-34); If a combination of colours without contours is not systematically arranged in a uniform and predetermined manner, too many different variations would be possible and this would not allow the competent authorities and economic operators to know the precise scope of the registrations. As the trade mark’s subject matter of protection is exclusively determined by the representation itself, any voluntary description detailing the systematic arrangement must accord with the representation (i.e. it cannot be inconsistent with the image shown) and must not extend beyond its subject matter (Article 3(2) EUTMIR). In addition, a lack of accord between the representation and the description leads to a lack of clarity and precision of the mark (Article 3(2) EUTMIR). Example of signs that are acceptable (with or without a description):

text: The sign can also indicate how the colours will be applied to the goods at issue where this is made by means of an iconic representation (as opposed to a naturalistic one), as shown in the following examples:

text: 2.5 Sound marks

text: Article 3(3)(g) EUTMIR defines sound marks as trade marks consisting exclusively of a sound or combination of sounds. EUTM applications for sound marks can only be an audio file reproducing the sound or an accurate representation of the sound in musical notation (for technical information and further details on valid means of representation of sound marks, see the Guidelines, Part B, Examination, Section 2, Formalities). Other means of representation, such as onomatopoeia, musical notes alone and sonograms will not be accepted as representations of sound marks for EUTM applications. In all cases, these representations would not sufficiently enable the competent authorities and the public to determine the clear and precise subject matter of protection. Description of a sound in words

text: A description such as certain notes of a piece of music, for example, ‘the first 9 bars of Für Elise’, or a description of the sound in words, for example, ‘the sound of a cockcrow’, is not sufficiently precise or clear and therefore does not make it possible to determine the scope of the protection sought (27/11/2003,

text: , Musical notation, EU:C:2003:641, § 59). Onomatopoeia

text: There is a lack of consistency between the onomatopoeia itself, as pronounced, and the actual sound or noise, or the sequence of actual sounds or noises, that it purports to imitate phonetically (27/11/2003,

text: , Musical notation, EU:C:2003:641, § 60).

text: Musical notes alone

text: A sequence of musical notes alone, such as E, D#, E, D#, E, B, D, C, A, does not constitute a graphical representation. Such a description, which is neither clear, nor precise nor self-contained, does not make it possible, in particular, to determine the pitch and duration of the sounds forming the melody for which registration is sought and that constitute essential parameters for the purposes of knowing the melody and, accordingly, of defining the trade mark itself (27/11/2003,

text: , Musical notation, EU:C:2003:641, § 61).

text: 2.6 Motion marks

text: Article 3(3)(h) EUTMIR defines motion marks as ‘trade mark(s) consisting of, or extending to, a movement or a change in the position of the elements of the mark’. The definition does not restrict motion marks to those depicting movement. A sign may also qualify as a motion mark if it is capable of showing a change in the position of the elements (for instance a sequence of stills). Motion marks do not include sound (see the definition of a multimedia mark below). Pursuant to Article 3(3)(h) EUTMIR, motion marks must be represented by submitting one of the following: a video file showing the movement or change of position;

text: a series of still sequential images showing the movement; the images may be

text: numbered or accompanied by a description explaining the sequence. A motion mark may only be refused registration under Article 7(1)(a) EUTMR when a reasonably observant person with normal levels of perception and intelligence would, upon consulting the EUTM register, not be able to understand precisely what the mark consists of, without expending a huge amount of intellectual energy and imagination (23/09/2010, R 443/2010‑2, RED LIQUID FLOWING IN SEQUENCE OF STILLS (MOVEMENT MARK), § 20). Examples of acceptable representations for motion marks.

text: Examples of acceptable representations for motion marks from CP11 ( ).

text: Examples of unacceptable representations for motion marks.

text: 2.7 Multimedia marks

text: According to Article 3(3)(i) EUTMIR, a multimedia mark is a trade mark consisting of, or extending to, the combination of image and sound. The article requires that multimedia marks ‘be represented by submitting an audiovisual file containing the combination of the image and the sound’. Examples of acceptable representations for motion marks from CP11 ( ):

text: 2.8 Hologram marks

text: Article 3(3)(j) EUTMIR defines a hologram mark as a trade mark consisting of elements with holographic characteristics, and adds that it ‘shall be represented by submitting a video file or a graphic or photographic reproduction containing the views which are necessary to sufficiently identify the holographic effect in its entirety.’

text: 2.9 Other marks

text: The following types of marks are not explicitly included in the non-exhaustive list of types of marks provided by Article 3(3) EUTMIR. They fall under the category of the mark type ‘other’.

text: 2.9.1 Layout of a retail store

text: In its judgment of 10/07/2014,

text: , Apple Store, EU:C:2014:2070, § 19, the Court of Justice found that a representation that depicts the layout of a retail store

text: may constitute a trade mark provided that it is capable of distinguishing the products or services of one undertaking from those of other undertakings. The layout was represented by means of a single design, combining lines, curves and shapes, without any indication of the size or proportions.

text: Following the abovementioned judgment, it cannot be excluded that the requirements for the representation of the layout of a retail store could be satisfied by a design alone, combining lines, curves and shapes, without any specific indication of the size or proportions in the description. The Court indicated that in such a case, the trade mark could be registered, provided that the sign is capable of distinguishing the services of the applicant for registration from those of other undertakings and if no other grounds for refusal apply. As a representation that depicts the layout of a retail store is not strictly covered by any of the types of marks listed in Article 3(3) EUTMIR, the representation must comply with the standards set out in Article 3(1) EUTMIR and may be accompanied by a description clearly specifying the subject matter for which protection is sought.

text: 2.9.2 Smell/olfactory marks

text: It is currently not possible to represent smells in compliance with Article 4 EUTMR, as the subject matter of protection cannot be determined with clarity and precision with generally available technology. Article 3(9) EUTMIR specifically excludes the filing of samples. The following are examples of non-satisfactory means of representation of a smell.

text: Chemical formula

text: Only specialists in chemistry would recognise the odour in question from such a formula.

text: Representation and description in words

text: The representation requirements are not satisfied by: ○ a graphic representation of the smell; ○ a description of the smell in words; ○ a combination of both (graphic representation and description in words).

text: In its judgment of 12/12/2002,

text: , Sieckmann, EU:C:2002:748, § 69-73, the Court dismissed the possibility of representing an olfactory mark by a chemical formula, by a description in writing, by the deposit of an odour sample or by a combination of those elements. There is no generally accepted international classification of smells that would make it possible — as with international colour codes or musical notation — to identify an olfactory sign objectively and precisely by attributing a name or precise code specific to each smell (27/10/2005,

text: , Odeur de fraise mûre, EU:T:2005:380, § 34).

text: 2.9.3 Taste marks

text: It is currently not possible to represent a taste in compliance with Article 4 EUTMR as Article 3(9) EUTMIR specifically excludes the filing of samples and the subject matter of protection cannot be determined with clarity and precision with generally available technology. The arguments mentioned above under paragraph 2.9.2 similarly apply to taste marks (04/08/2003, R 120/2001-2, THE TASTE OF ARTIFICIAL STRAWBERRY FLAVOUR (GUSTATORY MARK)).

text: 2.9.4 Tactile marks

text: It is currently not possible to represent the tactile effect of a certain material or texture in compliance with Article 4 EUTMR as Article 3(9) EUTMIR specifically excludes the filing of samples and the subject matter of protection cannot be determined with clarity and precision with generally available technology. The arguments mentioned above under paragraph 2.9.2 similarly apply to tactile marks (27/05/2015, R 2588/2014-2, EMBOSSED PATTERN ON A SMOOTH BOTTLE SURFACE (TACTILE MARK)).

text: 3 Relationship with Other EUTMR Provisions

text: Article 7(1)(a) EUTMR reflects the Office’s obligation to refuse signs that do not conform to the requirements of Article 4 EUTMR. If the sign does not meet these requirements and the representation is not clear and precise, the application will not be examined on the basis of the other absolute grounds for refusal. According to Article 7(3) EUTMR, the absolute grounds for refusal under Article 7(1)(a) EUTMR cannot be overcome through acquired distinctiveness in consequence of use of the mark.

text: Part B Examination Section 4 Absolute grounds for refusal Chapter 3

text: 1 General remarks

text: Distinctiveness of a trade mark within the meaning of Article 7(1)(b) EUTMR means that the sign serves to identify the goods and/or services for which registration is sought as originating from a particular undertaking, and thus to distinguish those goods and/or services from those of other undertakings (29/04/2004,

text: P -

text: P, Tabs (3D), EU:C:2004:259, § 32; 21/10/2004,

text: P, Das Prinzip der Bequemlichkeit, EU:C:2004:645, § 42; 08/05/2008,

text: P, Eurohypo, EU:C:2008:261, § 66; 21/01/2010,

text: P, Vorsprung durch Technik, EU:C:2010:29, § 33). Such distinctiveness can be assessed only by reference first to the goods or services for which registration is sought and, second, to the relevant public’s perception of that sign (12/07/2012,

text: P, Wir machen das Besondere einfach, EU:C:2012:460, § 24 and case-law cited therein). A minimum degree of distinctiveness is sufficient to prevent the application of the absolute ground for refusal provided for in Article 7(1)(b) EUTMR (03/04/2019,

text: , See More. Reach More. Treat More., EU:T:2019:13, § 19). A word mark that is descriptive of characteristics of goods or services for the purposes of Article 7(1)(c) EUTMR is, on that account, necessarily devoid of any distinctive character with regard to the same goods or services for the purposes of Article 7(1)(b) EUTMR (12/06/2007,

text: , Twist & Pour, EU:T:2007:171, § 39). In a similar vein, even though a given term might not be clearly descriptive with regard to the goods and services concerned, as to the point that an objection under Article 7(1)(c) EUTMR would not apply, the term would still be objectionable under Article 7(1)(b) EUTMR on the ground that it will be perceived by the relevant public as only providing information on the nature of the goods and/or services concerned and not as indicating their origin. This was the case with the term ‘medi’, which was considered as merely providing information to the relevant public about the medical or therapeutic purpose of the goods or of their general reference to the medical field (12/07/2012,

text: , Medi, EU:T:2012:369, § 22). An objection under Article 7(1)(b) EUTMR will apply in those cases where the lexical structure employed, although not correct from a grammatical point of view, can be considered to be common in advertising language and in the commercial context at issue (25/04/2013,

text: , Eco Pro, EU:T:2013:220, § 29-32).

text: 2 Virtual goods and services in a virtual environment

text: The general principles of distinctiveness are fully applicable to trade marks applied for virtual goods and services in virtual environments (for further information regarding virtual goods and services in a virtual environment, see the Guidelines, Part B, Examination, Section 3, Classification, Chapter 4, Building a list of goods and services, paragraph 4.4, Virtual goods, services in virtual environments and NFTs).

text: The mark will be distinctive within the meaning of Article 7(1)(b) EUTMR if it can identify the goods or services for which registration is sought as originating from a particular undertaking, thus distinguishing them from those of other undertakings. This distinctiveness will be assessed by reference, first, to the goods or services for which registration is sought and, second, to the relevant public’s perception of that sign. Real-world goods and services and the manner in which they are marketed can play an important role in assessing their corresponding virtual goods and services in virtual environments. This is mainly because consumer’s perceptions of real-world goods and services can sometimes be similar to their perception of the equivalent virtual goods and services in a virtual environment. This will usually be the case when the mark is applied for: virtual goods that merely depict real-world goods;

text: virtual goods that depict and emulate the functions of real-world goods;

text: services in a virtual environment that emulate a real-word service in a virtual

text: environment. This is because a key aspect of these virtual goods and services in virtual environments is to depict or to depict and emulate the core concepts of their physical equivalents. The assessment of real-world goods or services and their equivalent virtual goods or services in virtual environments should then be the same. However, this remains a case-by-case assessment (see 11/12/2024,

text: , Glashütte ORIGINAL (fig.), EU:T:2024:890, § 41). It cannot be excluded that, due to the specificity of virtual environments and the endless possibilities of creating virtual goods or services, a different assessment may be necessary. The Office will also look into any other possible grounds for objections to registration of the sign under Article 7(1) EUTMR, as Article 7(1)(b) might not be the only applicable grounds in relation to virtual goods and services.

text: 3 Word elements

text: Words are non-distinctive or cannot confer distinctiveness on a composite sign if they are so frequently used that they have lost any capacity to distinguish goods and services. The following terms, alone or in combination with other unregistrable elements, fall foul of this provision. Terms merely denoting a particular positive or appealing quality or function of the goods and services may be refused if applied for alone and/or in combination with descriptive terms: BEYOND as being a promise that the products will provide an experience that

text: goes beyond that of the ordinary (12/06/2024,

text: , Beyond Chocolate, EU:T:2024:380, § 18); ECO as denoting ‘ecological’ (24/04/2012,

text: , EcoPerfect, EU:T:2012:197,

text: § 25; 15/01/2013,

text: , EcoDoor, EU:T:2013:14, § 21);

text: FLEX and FLEXI as referring to ‘flexible’ (13/06/2014,

text: , Flexi,

text: EU:T:2014:519, § 20-21); GREEN as being ‘environmentally friendly’ (27/02/2015,

text: , Greenworld,

text: EU:T:2015:123, § 24); MEDI as referring to ‘medical’ (12/07/2012,

text: , Medi, EU:T:2012:369);

text: MULTI as referring to ‘much, many, more than one’ (17/11/2005, R 904/2004-2,

text: MULTI); MINI as denoting ‘very small’ or ‘tiny’ (17/12/1999, R 62/1999-2, MINIRISC);

text: MEGA as denoting ‘big’ (28/04/2015,

text: , MEGARAIL, EU:T:2015:232, § 38);

text: MY as indicating that the product meets the individual taste and preference

text: , my mochi (fig.), EU:T:2023:853, § 26). Premium/PREMIUM as referring to ‘best quality’ (22/05/2012,

text: , Suisse

text: Premium, EU:T:2012:252, § 46-49, 56, 58; 17/01/2013,

text: , Premium XL / Premium L, EU:T:2013:24, § 26); PRO as an indication that the designated goods are intended for ‘professionals’

text: or are ‘supporting’ something (25/04/2013,

text: , Eco Pro, EU:T:2013:220, § 29-32); PLUS as denoting ‘additional, extra, of superior quality, excellent of its kind’.

text: (15/12/1999, R 329/1999-1, PLATINUM PLUS); SUPER for highlighting the ‘positive qualities of the goods or services’ (judgments of

text: , Superleggera, EU:T:2010:212, § 23-30; 20/11/2002,

text: , Kit Pro / Kit Super Pro, EU:T:2002:279, § 26); ULTRA as denoting ‘extremely’ (09/12/2002, R 333/2002-1, ULTRAFLEX), exalting

text: a quality of the product (15/10/2019,

text: , Ultrarange, EU:T:2019:746, § 32) or on its own as a synonym of the term ‘extra’ (12/06/2024,

text: , ULTRA (fig.), EU:T:2024:375, § 47-52). UNIVERSAL as referring to goods that are ‘fit for general or universal use’

text: , UniversalPHOLED, EU:T:2012:210, § 22, 28).

text: Top level domain endings, such as ‘.com’, only indicate the place where information can be found on the internet and thus cannot render a descriptive or otherwise objectionable mark registrable. Therefore, www.books.com is as objectionable for printed matter as the term ‘books’ alone. This was confirmed by the General Court in its judgment of 21/11/2012,

text: , PHOTOS.COM, EU:T:2012:614, § 22, where it was stated that the element ‘.com’ is a technical and generic element, the use of which is required in the normal structure of the address of a commercial internet site. Furthermore, it may also indicate that the goods and services covered by the trade mark application can be obtained or viewed online, or are internet related. Accordingly, the element in question must also be considered to be devoid of distinctive character in respect of the goods or services concerned. Abbreviations of the legal form of a company such as Ltd., GmbH, etc. cannot add to the distinctiveness of a sign. Names of individual persons are distinctive, irrespective of the frequency of the name and even in the case of the most common surnames, such as Jones or García (16/09/2004,

text: , Nichols, EU:C:2004:538, § 26, 30), and the names of

text: prominent persons (including heads of state). However, an objection will be raised if the name can also be perceived as a non-distinctive term in relation to the goods and services (e.g. ‘Baker’ for pastry products). For objection based on titles of books, please see the Guidelines, Part B, Examination, Section 4, Chapter 4, Descriptive Trade Marks, Paragraph 2.7.2, Titles of books.

text: 4 Single letters

text: 4.1 General considerations

text: In its judgment of 09/09/2010,

text: P, α, EU:C:2010:508, the Court of Justice ruled that, in the case of trade marks consisting of single letters represented in standard characters with no graphic modifications, it is necessary to assess whether the sign at issue is capable of distinguishing the different goods and services in the context of an examination, based on the facts, focusing on the goods or services concerned (para. 39). The Court recalled that, according to Article 4 EUTMR, letters are among the categories of signs of which an European Union trade mark may consist, provided that they are capable of distinguishing the goods or services of one undertaking from those of other undertakings (para. 28), and emphasised that registration of a sign as a trade mark does not require a specific level of linguistic or artistic creativity or imaginativeness on the part of the applicant. Although acknowledging that it is legitimate to take into account the difficulties in establishing distinctiveness that may be associated with certain categories of trade marks because of their very nature, and that it may prove more difficult to establish distinctiveness for marks consisting of a single letter than for other word marks (para. 39), the Court clearly stated that these circumstances do not justify laying down specific criteria supplementing or derogating from application of the criterion of distinctiveness as interpreted in the case-law (paras 33-39). As to the burden of proof, the Court stated that, when examining absolute grounds for refusal, the Office is required under Article 95(1) EUTMR to examine, of its own motion, the relevant facts that might lead it to raise an objection under Article 7(1) EUTMR and that that requirement cannot be made relative or reversed to the detriment of the EUTM applicant (paras 55-58). Therefore, it is for the Office to explain, with reasons, why a trade mark consisting of a single letter represented in standard characters is devoid of any distinctive character. It is therefore necessary to carry out a thorough examination based on the specific factual circumstances of the case in order to assess if a given single letter represented in standard characters can function as a trade mark in respect of the

text: goods/services concerned. This need for a factual assessment implies that it is not possible to rely on assumptions (such as that consumers are generally not accustomed to seeing single letters as trade marks). Consequently, when examining single-letter trade marks, generic, unsubstantiated arguments, such as those relating to the availability of signs, should be avoided, given the limited number of letters. The Office is obliged to establish, on the basis of a factual assessment, why the trade mark applied for would be objectionable. It is therefore clear that the examination of single-letter trade marks should be thorough and stringent, and that each case calls for careful examination of whether a given letter can be considered inherently distinctive for the goods and/or services concerned.

text: 4.2 Examples

text: For instance, in technical domains such as those involving computers, machines, motors and tools, it is more likely that single letters will be perceived as technical, model or catalogue references rather than as indicators of origin, although the fact that this is the case should result from a factual assessment. Depending on the outcome of the prior examination, a trade mark consisting of a single letter represented in standard characters might be objectionable under Article 7(1)(b) EUTMR on the ground that it is devoid of inherent distinctiveness for the goods and/or services concerned or part thereof. This would be the case, for example, for a trade mark consisting of the single letter ‘C’ for ‘fruit juices’, as this letter is commonly used to designate vitamin C. The relevant public would not perceive it as a sign distinguishing the commercial origin of the goods in question. Another example of lack of distinctiveness would be a single-letter trade mark applied for in respect of the sort of toy cubes used to teach children how to construct words. The individual letters in this example are not being used as a sign to distinguish the commercial origin of the goods in question. Although in this case there is no direct descriptive relationship between the letters and the goods, a trade mark consisting of a single letter would lack distinctiveness, because, when it comes to toy cubes, consumers are more used to seeing single letters as having either a functional or a utilitarian connotation, rather than as indicators of commercial origin. However, if it cannot be established that a given single letter is devoid of any distinctive character for the goods and/or services concerned, then it should be accepted, even if represented in standard characters or in a fairly basic manner.

text: For example, the letter was accepted in respect of transport; packaging and storage of goods; travel arrangement in Class 39 and services for providing food

text: and drink; temporary accommodation in Class 43 (30/09/2010, R 1008/2010-2, W (fig.), § 12-21). For further examples see the Guidelines, Part B, Examination, Section 4, Absolute Grounds for Refusal, Chapter 4, Descriptive Trade Marks (Article 7(1)(c) EUTMR).

text: 5 Slogans: assessing distinctive character

text: The Court of Justice has ruled that it is inappropriate to apply to slogans stricter criteria than those applicable to other types of signs when assessing their distinctive character (12/07/12,

text: P, Wir machen das Besondere einfach, EU:C:2012:460 and case-law cited). Advertising slogans are objectionable under Article 7(1)(b) EUTMR when the relevant public only perceives them as a mere promotional formula. However, they are deemed to be distinctive if, apart from their promotional function, the public perceives them as an indication of the commercial origin of the goods or services in question. The Court of Justice has provided the following criteria that should be used when assessing the distinctive character of a slogan (21/01/2010,

text: P, Vorsprung durch Technik, EU:C:2010:29, § 47; 13/04/2011,

text: , Wir machen das Besondere einfach, EU:T:2011:175, § 37). An advertising slogan is likely to be distinctive whenever it is seen as more than a mere advertising message extolling the qualities of the goods or services in question because it: constitutes a play on words, and/or

text: introduces elements of conceptual intrigue or surprise, so that it may be perceived

text: as imaginative, surprising or unexpected, and/or has some particular originality or resonance, and/or

text: triggers in the minds of the relevant public a cognitive process or requires an

text: interpretative effort. In addition to the above, the following characteristics of a slogan may contribute towards a finding of distinctiveness: unusual syntactic structures;

text: the use of linguistic and stylistic devices, such as alliteration, metaphors, rhyme,

text: paradox, etc. However, the use of unorthodox grammatical forms must be carefully assessed because advertising slogans are often written in a simplified form, in such a way as to make them more concise and snappier (24/01/2008,

text: , Safety 1st, EU:T:2008:15, § 40). This means that a lack of grammatical elements such as definite articles or pronouns (THE, IT, etc.), conjunctions (OR, AND, etc.) or prepositions (OF, FOR, etc.) may not always be sufficient to make the slogan distinctive. In ‘Safety 1st’, the Court considered that the use of ‘1st’ instead of ‘FIRST’ was not sufficiently unorthodox to add distinctiveness to the mark.

text: A slogan whose meaning is vague or impenetrable or whose interpretation requires considerable mental effort on the part of the relevant consumers is also likely to be distinctive since consumers would not be able to establish a clear and direct link with the goods and services for which the trade mark is protected. The fact that the relevant public is a specialist one and its degree of attention is higher than average cannot decisively influence the legal criteria used to assess the distinctive character of a sign. As stated by the Court of Justice, ‘it does not necessarily follow that a weaker distinctive character of a sign is sufficient where the relevant public is specialist’ (12/07/12,

text: P, Wir machen das Besondere einfach, EU:C:2012:460, § 48). Moreover, according to well-established case-law from the General Court, the level of attention of the relevant public may be relatively low when it comes to promotional indications, whether that public consists of average end consumers or of a more attentive public made up of specialists or circumspect consumers. This finding is applicable even for goods and/or services where the level of attention of the relevant public is generally high, such as financial and monetary services (29/01/2015,

text: , SO WHAT DO I DO WITH MY MONEY, EU:T:2015:54, § 27; 29/01/2015,

text: , INVESTING FOR A NEW WORLD, EU:T:2015:56, § 27 and cited case-law). The following examples show some of the different functions that slogans may serve and the arguments that can support an objection under Article 7(1)(b) EUTMR.

text: Some examples of accepted slogans

text: A slogan is objectionable under Article 7(1)(c) EUTMR if it immediately conveys information about the kind, quality, intended purpose or other characteristics of the goods or services (see the Guidelines, Part B, Examination, Section 4, Absolute Grounds for Refusal, Chapter 4, Descriptive Trade Marks (Article 7(1)(c) EUTMR)).

text: 6 Simple figurative elements

text: Simple geometric devices such as circles, lines, rectangles or common pentagons are unable to convey any message that can be remembered by consumers and will accordingly not be seen by them as a trade mark.

text: As set out by the Court, an extremely simple sign, composed of a basic geometric figure such as a circle, a line, a rectangle or a pentagon is not capable, as such, of conveying a message that consumers can remember, with the result that they will not consider it as a trade mark (12/09/2007,

text: , Pentagon, EU:T:2007:271, § 22).

text: Examples of refused trade marks

text: Example of an accepted trade mark

text: Further examples of simple figurative elements (combined with non-distinctive/ descriptive terms) can be found in the Guidelines, Part B, Examination, Section 4, Absolute Grounds for Refusal, Chapter 4, Descriptive Trade Marks (Article 7(1)(c) EUTMR).

text: 7 Commonplace figurative elements

text: In some cases, the figurative element consists of a representation of the goods and services for which the trade mark is protected. In principle, the said representation is considered to be descriptive and/or devoid of distinctive character whenever it is a true-to-life portrayal of the goods and services or when it consists of a symbolic/stylised portrayal of the goods and services that does not depart significantly from the common representation of the said goods and services.

text: In other cases, the figurative element might not represent the goods and services but might still have a direct link with the characteristics of the goods and/or services. In such cases, the sign will be considered non-distinctive, unless it is sufficiently stylised.

text: The following representation of a vine leaf is not distinctive for wine:

text: Similarly, the following representation of a cow for milk products is not distinctive:

text: EUTM No 11 345 998, claiming Classes 29 (milk and milk products, etc.) and 35. The above sign was refused, as representations of cows are commonly used in relation to milk and milk products. The fact that the subject mark consists of an ‘aerial’ picture of a cow is not sufficient to confer distinctive character on the sign, as slight alterations to a commonplace sign will not make that sign distinctive. The same reasoning would be applicable also to related goods such as milk chocolate. Further examples of common figurative elements (combined with non-distinctive/ descriptive terms) can be found in the Guidelines, Part B, Examination, Section 4, Absolute Grounds for Refusal, Chapter 4, Descriptive Trade Marks (Article 7(1)(c) EUTMR).

text: 8 Typographical symbols

text: Typographical symbols such as a full stop, comma, semicolon, quotation mark or exclamation mark will not be considered by the public as an indication of origin. Consumers will perceive them as a sign meant to catch the consumer’s attention but not as a sign that indicates commercial origin. A similar reasoning applies to common currency symbols, such as the €, £, $ signs; depending on the goods concerned, these signs will only inform consumers that a specific product or service is traded in that currency. Examples of refused trade marks

text: 9 Pictograms

text: Pictograms are basic and unornamented signs and symbols that will be interpreted as having purely informational or instructional value in relation to the goods or

text: services concerned. Examples would be signs that indicate mode of use (like a picture of a telephone in relation to pizza delivery services) or that convey a universally understandable message (like a knife and fork in relation to the provision of food).

text: Commonly used pictograms, for example, a white ‘P’ on a blue background to designate a parking place (this sign could also be objectionable under Article 7(1)(d) EUTMR) or the design of an ice cream to designate that ice cream is sold in the vicinity, are not distinctive in relation to the goods or services in respect of which they are used. Moreover, if the pictogram immediately conveys information about the kind, quality, intended purpose or other characteristics of the goods or services, it will also be objectionable under Article 7(1)(c) EUTMR (20/07/2016, R 2345/2015-4, PICTOGRAM OF A DROP OF LIQUID AND OF THREE DIRECTIONAL ARROWS (fig.)).

text: Examples of refused trade marks

text: Example of accepted trade marks

text: 10 Common/non-distinctive labels

text: A figurative sign may be composed of shapes, designs or figures that will be perceived by the relevant public as non-distinctive labels. In this case, the reason for the refusal lies in the fact that such figurative elements are not capable of impressing themselves on the consumer’s mind, since they are too simple and/or commonly used in connection with the goods/services for which protection is sought.

text: See the following examples:

text: In the same way, the following marks were rejected.

text: In the three preceding cases, both the colour and the shape of the labels are quite commonplace. The same reasoning applies to the stylised representation of the fruits in the last of the three cases. Furthermore, the said figurative element represents or

text: at least strongly alludes to the ingredients of some of the claimed goods, such as, for example, fruit juices.

text: 11 Shape marks

text: 11.1 Preliminary remarks

text: Article 3(3)(c) EUTMIR defines shape marks as trade marks consisting of, or extending to, a three-dimensional shape, including containers, packaging, the product itself or their appearance. The term ‘extending to’ means that these marks cover not only shapes per se but also shapes that contain word or figurative elements such as logos or labels. Article 7(1)(b) EUTMR does not distinguish between different categories of trade marks in determining whether a trade mark is capable of distinguishing the goods or services of one undertaking from those of other undertakings (05/03/2003,

text: , Soap device, EU:T:2003:53, § 44). In applying this uniform legal standard to different trade marks and categories of trade marks, a distinction must be made depending on consumer perception and market conditions. For signs consisting of the shape of the goods themselves, no stricter criteria apply than for other marks, but it may be more difficult to come to a finding of distinctiveness, as such marks will not necessarily be perceived by the relevant public in the same way as a word or figurative mark (07/10/2004,

text: P, Torches, EU:C:2004:592, § 30). Shape marks can be grouped into three categories: shapes unrelated to the goods and services themselves;

text: shapes that consist of the shape of the goods themselves or part of the goods;

text: the shape of packaging or containers.

text: 11.2 Shapes unrelated to the goods or services themselves

text: Shapes that are unrelated to the goods or services themselves (e.g. the Michelin Man) are usually distinctive.

text: Accepted trade marks

text: 11.3 Shape of the goods themselves or shapes related to the goods or services; shape of the packaging or containers

text: The case-law developed for three-dimensional marks that consist of the representation of the shape of the product itself is also relevant for figurative marks consisting of two-dimensional representations of the product or elements of it (14/09/2009,

text: , Uhr, EU:T:2009:324; 04/05/2017,

text: P, DEVICE OF A SQUARE-SHAPED PACKAGING (fig.), EU:C:2017:340).

text: In the framework of the European Union Intellectual Property Network (EUIPN), the Office and a number of trade mark offices in the European Union have agreed on a Common Practice in relation to the distinctiveness of three-dimensional marks (shape marks) containing verbal and/or figurative elements when the shape is not distinctive in itself (also referred to as Convergence Project 9 or CP9 Practice). The common principles are detailed below under point 10.3.1.

text: For a shape that is the shape or packaging of the goods applied for, the examination should be conducted in the following steps.

text: Step 2: Assessment of the distinctiveness of the shape itself

text: Step 3: Identification of the elements of the shape mark

text: Step 4: Assessment of the distinctiveness of the sign as a whole

text: Step 1: Article 7(1)(e) EUTMR analysis The examiner should first examine whether one of the grounds for refusal under Article 7(1)(e) EUTMR applies, as those cannot be overcome through acquired distinctiveness. With regard to this first step, see the Guidelines, Part B, Examination, Section 4, Absolute Grounds for Refusal, Chapter 6: Shapes or Other Characteristics with an Essentially Technical Function, Substantial Value or Resulting from the Nature of the Goods (Article 7(1)(e) EUTMR). Step 2: assessment of the distinctiveness of the shape itself The criteria for distinctiveness of the shape itself must be checked. The basic test is whether the shape is so materially different from basic, common or expected shapes that it enables a consumer to identify the goods just by their shape and to buy the same item again if he or she has had positive experiences with the goods. Frozen vegetables in the form of a crocodile are a good example of this. The following criteria are relevant when examining the distinctiveness of shape trade marks consisting exclusively of the shape of the goods themselves. A shape is non-distinctive if it is a basic shape (19/09/2001,

text: , red-white

text: squared washing tablet (fig.), EU:T:2001:223) or a combination of basic shapes (13/04/2000, R 263/1999-3, Tönnchen (3D)). To be distinctive, the shape must depart significantly from the shape that is expected

text: by the consumer, and it must depart significantly from the norm or customs of the sector. The more closely the shape resembles the shape that is most likely to be taken by the product in question, the greater the likelihood that it is not distinctive (07/10/2004,

text: P, Torches, EU:C:2004:592, § 31). It is not enough for the shape to be just a variant of a common shape or a variant

text: of a number of shapes in an area where there is a huge diversity of designs (07/10/2004,

text: P, Torches, EU:C:2004:592, § 32; 07/02/2002,

text: , Torches, EU:T:2002:28, § 37). Functional shapes or features of a shape mark will be perceived by the consumer

text: as such. For example, for washing tablets, bevelled edges avoid damage to laundry, and layers of different colours represent the presence of different active ingredients. While the public is accustomed to recognising a shape mark as an indicator of source, this is not necessarily the case where the three-dimensional sign is indistinguishable from the product itself. Consequently, an assessment of distinctive character cannot result in different outcomes for a shape mark consisting of the design of the product itself and for a figurative mark consisting of a faithful representation of the same product (19/09/2001,

text: , red-white squared washing tablet (fig.), EU:T:2001:223, § 49). Step 3: identification of the elements of the shape mark In the third step, the examiner should assess whether the representation of the shape mark extends to any other elements that might give the trade mark distinctive character. As explained below, Convergence Project 9 has established certain

text: 11.3.1 Elements and factors affecting the distinctiveness of the sign as a whole when the shape is non-distinctive (CP9)

text: As a starting point, if a non-distinctive shape contains an element that is distinctive on its own, it will suffice to render the sign as a whole distinctive. However, non-distinctive elements or descriptive elements combined with a standard shape will not confer distinctiveness to the sign (18/01/2013,

text: , Vibrator, EU:T:2013:26, § 34-36). The Office will identify all the elements to which the shape mark extends and their inherent distinctiveness: verbal and figurative elements;

text: colours (single and colour combinations);

text: a combination of the above.

text: Where the shape extends to verbal/figurative elements, their identification and assessment of distinctiveness should include consideration of the following factors: size/proportion of the elements with respect to the shape;

text: contrast of the element with respect to the shape;

text: position of the element on the shape.

text: Where a shape extends to colour and colour combinations, their identification and assessment of distinctiveness should include consideration of the particular arrangement of colours on the specific shape. 11.3.1.1 Verbal and figurative elements

text: The size and proportion of the verbal/figurative elements, their contrast with respect to the shape, and their actual position on it, are all factors which may affect the perception of the sign when assessing its distinctiveness.

text: 11.3.1.1.1 Size/proportion

text: The size and proportion of the elements must be taken into account when assessing the distinctive character of a shape mark. The assessment is first and foremost based on the representation of the sign, as submitted by the applicant, regardless of the usual size of the product. The distinctive element must be clearly visible in the representation

text: to render the sign distinctive as a whole. No specific proportions between the elements and the shape are required.

text: When the verbal/figurative element is sufficiently large to be clearly identified as distinctive, and has sufficient impact on the overall impression given by the sign, it renders the sign as a whole distinctive.

text: Distinctive example

text: When the element is large, but identified as non-distinctive, its size alone, in proportion to the shape, will not be sufficient to render the sign as a whole distinctive.

text: Non–distinctive example

text: Specific market realities must also be taken into consideration. Consumers are in the habit of identifying small elements on certain goods, in which case, relatively small-sized elements may still have a sufficient impact to render the sign as a whole distinctive, as long as their size still allows them to be clearly identified as distinctive.

text: Distinctive examples

text: When the verbal/figurative element is small to the point it is not identifiable as distinctive, it will not have a sufficient impact on the overall impression and therefore will not render the shape as a whole distinctive.

text: Non-distinctive examples

text: 11.3.1.1.2 Contrast

text: The use of contrast can also affect the capacity of the verbal/figurative element(s) to be identified, and ultimately to render the sign distinctive as a whole. Contrast

text: can be achieved by the use of different shades of colours or by embossing/engraving/ debossing certain elements on the specific goods.

text: 1. Colour contrast

text: The use of less contrasting colours can still be sufficient to allow an element to be identified as distinctive in the representation and result in a distinctive sign.

text: Distinctive examples

text: On the contrary, when the element cannot clearly be identified as distinctive in the representation due to a lack of contrast, the element will have no impact on the assessment of the distinctiveness of the sign as the consumer will not be able to immediately identify this element and ultimately distinguish the sign from others.

text: Non-distinctive examples

text: 2. Engraving/Embossing/Debossing

text: Due to their nature, the colour of engravings (action of cutting or carving (a text or design) on the surface of a hard object), embossings (action of carving, moulding, or stamping a design on a surface or object so it stands out in raised relief) and debossings (action of carving, moulding, or stamping a design on (a surface or object) so that it stands out in recessed relief) might blend in with the product,

text: making them harder to perceive and be identified. Nevertheless, engravings are frequently used to distinguish shape marks.

text: The effect of engraving/embossing/debossing may influence the identification of the element and the overall assessment of the distinctiveness of the sign.

text: Distinctive examples Non-distinctive examples

text: In principle, the fact of engraving/embossing/debossing a non-distinctive element on a non-distinctive shape is not in itself sufficient to render a sign distinctive.

text: 11.3.1.1.3 Position

text: The position of an element will affect its capacity to be identified as distinctive or not, and ultimately convey a distinctive character to the sign.

text: In general, distinctive elements will render a sign distinctive as a whole, irrespective of their position on the good and the usual presentation of the product on the market, as long as they can be identified as distinctive in the representation of the trade mark application.

text: Distinctive examples Non-Distinctive examples

text: In some situations, elements may be perceived differently by the consumer because of their position on the goods, and thus change the finding of distinctiveness.

text: 11.3.1.2 Colours

text: The situations in which colours cannot provide distinctiveness to the goods can be the following:

text: in many instances, a colour would merely be a decorative element of the goods or

text: comply with the consumer’s request (e.g. colours of cars or T-shirts), irrespective of the number of colours concerned; a colour can be the nature of the goods (e.g. for tints);

text: a colour can be technically functional (e.g. the colour red for fire extinguishers,

text: various colours used for electric cables); a colour may also be usual (e.g. again, red for fire extinguishers);

text: a colour may indicate a particular characteristic of the goods, such as a flavour

text: (yellow for lemon flavour, pink for strawberry flavour). See judgment of 03/05/2017,

text: , GREEN STRIPES ON A PIN (col.), EU:T:2017:295, § 43 to 47, in which the Court stated that the colour green, perceived as the colour of nature, would lead the relevant public to understand it as referring to the ecological nature of the goods at issue (wind energy converters).

text: A colour is not normally inherently capable of distinguishing the goods of a particular undertaking (06/05/2003,

text: , Libertel, EU:C:2003:244, § 65). Therefore, a single colour will in principle not be distinctive for any goods and services except under

text: exceptional circumstances. In all cases, the examination will require a case-by-case analysis.

text: In principle, the mere fact of adding a single colour to the shape of a good in the absence of any other distinctive verbal or figurative distinctive element would not render the sign inherently distinctive.

text: Non-distinctive examples

text: However, it cannot be excluded that a particular arrangement of colours which is uncommon for the goods and creates an overall memorable impression can render the sign as a whole distinctive.

text: Distinctive example Non-distinctive example

text: 11.3.1.3 Combinations of factors and elements

text: There are situations where a shape mark contains more than one of the elements reviewed above. Moreover, there may be cases where more than one of the

text: abovementioned factors are relevant to determining the impact of the elements on the distinctiveness of the sign.

text: In all situations, the distinctiveness of the sign will depend on the overall impression produced by the combination of those factors and elements.

text: 11.3.1.3.1 Combination of factors

text: When several factors (such as size, position or contrast) negatively affect the element from being identified as distinctive, this will lead to a non-distinctive overall impression of the sign.

text: Non-distinctive examples Distinctive example

text: 11.3.1.3.2 Combination of non-distinctive elements

text: In general, combining a non-distinctive shape with verbal and/or figurative elements, which are considered individually devoid of distinctive character, does not result in a distinctive sign.

text: Non-distinctive example

text: Nevertheless, combining a non-distinctive shape with elements which, when considered individually are devoid of distinctive character, could be perceived as a badge of origin due to the perception of the relevant consumer and the composition of the sign, when considered as a whole.

text: Distinctive example

text: 11.3.1.3.3 Combination of distinctive and non-distinctive verbal/figurative elements and colours

text: In general, combining a distinctive element together with other non-distinctive elements on a non-distinctive shape may render the mark distinctive as a whole, as long as the distinctive element can be clearly identified among all the other elements.

text: Distinctive example

text: However, if the distinctive element is not immediately perceived by the consumer due to the presence of non-distinctive elements, the combination may result in a nondistinctive sign.

text: Non-distinctive example

text: 11.3.2 Shape of the goods themselves or shapes related to the goods or services

text: 11.3.2.1 The specific case of toys, dolls and play figures

text: Applications for shape marks in respect of toys, dolls and play figures in Class 28, or for figurative marks consisting of a faithful representation of such goods, must be assessed in the same way as for other shape marks. To be distinctive, the shape must depart significantly from the shape that is expected by the consumer. In other words, it must depart significantly from the norm or customs of the sector so that it enables a consumer to identify the goods just by their shape. This may be complicated by the sheer volume and proliferation of toy animals, figures, dolls and assorted characters in this market sector. Simply adding a basic set of clothing or basic human characteristics such as eyes or a mouth to a common plush toy such as a rabbit or a cat will generally not suffice. It is commonplace to present toy dolls and animals in clothing and to provide a separate range of clothing options, so that the user of such goods can change the appearance of the toy. It is also common to humanise the toys to make them more attractive. Within such a high-volume marketplace, the presentation of these goods in such a way will invariably leave the relevant consumer struggling, without prior exposure, to perceive a badge of origin in such marks. The more basic the character, the more unusual the additional elements must be in order to create a whole that serves to ensure that the relevant public is able to distinguish the applicant’s goods from similar goods provided by other undertakings. The final conclusion must be based on the appearance of the sign as a whole.

text: Rejected toy shapes

text: Accepted toy shapes

text: 11.3.2.2 Examples of shapes of the goods themselves or shapes related to the goods or services

text: The following is a list of examples of shapes of goods for which protection has been sought and an analysis of them (in relation with Article 7(1)(b) only).

text: Rejected product shapes

text: Accepted product shapes

text: Analogous criteria, mutatis mutandis, apply to shapes related to services, for example the device of a washing machine for laundry services.

text: 11.3.3 Shape of the packaging or containers

text: The shape applied for must be materially different from a combination of basic or common elements and must be striking. In the area of containers, regard must also be had to any functional character of a given element. As, in the field of containers and bottles, usage in trade might be different for different types of goods, it is recommended to make a search as to which shapes are on the market by choosing a sufficiently broad category of the goods concerned (i.e. in order to assess the distinctiveness of a milk container, a search must be carried out in relation to containers for beverages in general; see, in that regard, the Opinion of the Advocate General of 14/07/2005,

text: P, Standbeutel, EU:C:2005:474).

text: Examples of marks for which protection was sought for the shape of the packaging

text: Rejected trade marks

text: Accepted trade marks

text: 12 Position marks

text: According to Article 3(3)(d) EUTMIR , position marks are trade marks consisting of the specific way in which the mark is placed on or affixed to the product. Applications for position marks effectively seek to extend protection to the specific way in which elements (figurative, colour, etc.) are placed on or affixed to the product. The factors to be taken into account when examining shape marks are also relevant for position marks. In particular, the examiner must consider whether the relevant consumer will be able to identify a sign that is different from the normal appearance of the products themselves. A further relevant consideration in dealing with position marks is whether the positioning of the mark upon the goods is likely to be understood as having a trade mark context. Note that even where it is accepted that the relevant public may be attentive to the different aesthetic details of a product, this does not automatically imply that they will perceive it as a trade mark. In certain contexts, and given the norms and customs of particular trades, a position mark may appeal to the eye as an independent feature being distinguishable from the product itself and thus communicating a trade mark message. Examples The following are examples of the assessment of position marks.

text: Rejected position marks

text: Accepted position mark

text: 13 Pattern marks

text: Pattern marks may cover any kind of goods and services. However, in practice they are more commonly filed in relation to goods such as paper, fabrics, clothing articles, leather goods, jewellery, wallpaper, furniture, tiles, tyres, building products, etc., that is to say, goods that normally feature designs. In these cases, the pattern is nothing else

text: than the outward appearance of the goods. Although patterns may be represented in the form of square/rectangular labels, they should nonetheless be assessed as if they covered the entire surface of the goods for which protection is sought. It must also be taken into account that when a pattern mark claims protection for goods such as beverages or fluid substances in general, that is to say, goods that are normally distributed and sold in containers, the assessment of the design should be made as if it covered the outward surface of the container/packaging itself. It follows from the above that, as a rule, in the assessment of the distinctive character of patterns, the examiner should use the same criteria that are applicable to shape marks that consist of the appearance of the product itself (19/09/2012,

text: , Stoffmuster, EU:T:2012:439). With regard to services, examiners should bear in mind that pattern marks will be used in practice on letterheads and correspondence, invoices, internet websites, advertisements, shop signs, etc. In principle, if a pattern is commonplace, traditional and/or typical, it is devoid of distinctive character. In addition, patterns that consist of basic/simple designs usually lack distinctiveness. The reason for the refusal lies in the fact that such patterns do not convey any ‘message’ that could make the sign easily memorable for consumers. Paradoxically, the same applies to patterns composed of extraordinarily complex designs. In these cases the complexity of the overall design will not allow the design’s individual details to be committed to memory (09/10/2002,

text: , Glass Pattern, EU:T:2002:245, § 28). Indeed, in many cases the targeted public would perceive patterns as merely decorative elements. In this regard, it must be taken into account that the average consumer tends not to look at things analytically. A trade mark must therefore enable average consumers of the goods/services in question, who are reasonably well informed and reasonably observant and circumspect, to distinguish the product concerned from those of other undertakings without conducting an analytical or comparative examination and without paying particular attention (12/02/2004,

text: , Perwoll, EU:C:2004:88, § 53; 12/01/2006,

text: P, Standbeutel, EU:C:2006:20, § 29). The fact that the pattern may also have other functions and/or effects is an additional argument for concluding that it lacks distinctive character. By contrast, if a pattern is fanciful, unusual and/or arbitrary, departs from the norm or customs of the sector or is, more generally, capable of being easily memorised by the targeted consumers, it usually deserves protection as an EUTM. As seen above, the distinctive character of pattern marks must usually be assessed with regard to goods. Nevertheless, a pattern mark that has been considered devoid of distinctive character for the goods it covers must also be regarded as lacking distinctiveness for services that are closely connected to those goods. For example, a stitching pattern that is devoid of distinctive character for clothing articles and leather goods must be regarded as lacking distinctiveness also for retail services concerning those goods (see, by analogy, decision of 29/07/2010, R 868/2009-4, DEVICE OF A

text: POCKET (fig.)). The same considerations would apply to a fabric pattern with regard to services such as manufacture of fabrics.

text: Examples of pattern marks

text: Rejected pattern marks

text: Accepted pattern marks

text: 14 Colour marks

text: This paragraph is concerned with single colours or combinations of colours as such (‘colour marks’ within the meaning of Article 3(3)(f) EUTMIR). Where colours or colour combinations as such are applied for, the appropriate examination standard is whether they are distinctive either if applied to the goods or their packaging, or if used in the context of delivery of services. It is a sufficient ground for a mark to be refused if the mark is not distinctive in either of these situations. For colour combinations, examination of distinctiveness should be based on the assumption that the colour combination appears on the goods or their packaging, in a way that accords with the representation, or in advertisements or promotional material for the services.

text: 14.1 Single colours

text: As regards the registration as trade marks of colours per se, the fact that the number of colours actually available is limited means that a small number of trade mark registrations for certain services or goods could exhaust the entire range of colours available. Such an extensive monopoly would be incompatible with a system of undistorted competition, in particular because it could have the effect of creating an unjustified competitive advantage for a single trader. Nor would it be conducive to economic development or the fostering of the spirit of enterprise for established traders to be able to register the entire range of colours that is in fact available for their own benefit, to the detriment of new traders (06/05/2003,

text: , Libertel, EU:C:2003:244). As has been confirmed by the Court of Justice, consumers are not in the habit of making assumptions about the origin of goods based on their colour or the colour of their packaging, in the absence of any graphic or word element, because as a rule a colour per se is not used as a means of identification in current commercial practice (06/05/2003,

text: , Libertel, EU:C:2003:244). A colour is not normally inherently capable of distinguishing the goods of a particular undertaking (para. 65). Therefore, single colours are not distinctive for any goods and services except under exceptional circumstances.

text: Such exceptional circumstances require the applicant to demonstrate that the mark is unusual or striking in relation to these specific goods or services. These cases will be very rare, for example in the case of the colour black for milk. It is not necessary for a refusal that one of the factors listed in paragraph 13.2 below is present, but if this is the case, it should be used as a further argument in support of the refusal. Where the single colour is found to be commonly used in the relevant sector(s) and/or to serve a decorative or functional purpose, the colour must be refused. The public interest is, according to the Court, an obstacle to the monopolisation of a single colour, irrespective of whether the relevant field of interest belongs to a very specific market segment (13/09/2010,

text: , Colour (shade of orange) II, EU:T:2010:396, § 44-47).

text: 14.2 Colour combinations

text: In the case of a colour combination, a refusal can only be based on specific facts or arguments, and where such specific arguments for refusal are not established, the mark must be accepted. If one of the two colours is either the commonplace colour for the product or the natural colour of the product, that is to say, a colour is added to the usual or natural colour of the product, an objection applies in the same way as if there were only one colour. Example: grey is the usual colour for the grip of gardening tools, and white is the natural colour of washing tablets. Therefore, a washing tablet that is white with another layer in red is in fact to be judged as a case that involves the addition of a colour. The situations in which a combination of two colours should nevertheless be refused include the following. In many instances, a colour would merely be a decorative element of the goods or

text: comply with the consumer’s request (e.g. colours of cars or T-shirts), irrespective of the number of colours concerned. A colour can be the nature of the goods (e.g. for tints).

text: A colour can be technically functional (e.g. colour red for fire extinguishers, various

text: colours used for electric cables). A colour may also be usual (e.g. again, red for fire extinguishers, yellow for postal

text: services in many countries). A colour may indicate a particular characteristic of the goods, such as a flavour

text: (yellow for lemon flavour, pink for strawberry flavour). See the GREEN STRIPES ON A PIN (col.) judgment (03/05/2017,

text: , GREEN STRIPES ON A PIN (col.), EU:T:2017:295, § 43-47), in which the General Court stated that the colour green, perceived as the colour of nature, would lead the relevant public to understand it as referring to the ecological nature of the goods at issue ( wind energy converters ). A colour combination should also be refused if the existence of the colour

text: combination can already be found on the market, in particular if used by different competitors (e.g. the Office proved that the colour combination red and yellow is used by various enterprises on beer and soft drink cans). In all these cases the trade mark should be objected to but with careful analysis of the goods and services concerned and the situation on the market. The criteria to assess the distinctiveness of colour marks designating services should not be different from those applicable to colour marks designating goods (as reiterated by the General Court in its Grau/Rot judgment (12/11/2010,

text: , Grau/Rot, EU:T:2010:466)). In this case, the colour combination applied for was considered not to differ for the relevant consumer in a perceptible manner from the colours generally used for the services concerned. The General Court concluded that the colour combination applied for was very close to the combination ‘white/red’ used on the railway crossing gates and traffic signs associated with train traffic and that the sign, as a whole, would be recognised by the relevant public as a functional or decorative element and not as an indication of the commercial origin of the services.

text: For the names of colours see the Guidelines, Part B, Examination, Section 4, Absolute Grounds for Refusal, Chapter 4, Descriptive Trade Marks (Article 7(1)(c) EUTMR) .

text: 15 Sound marks

text: The definition of sound marks is restricted to only those that consist exclusively of a sound or a combination of sounds ( Article 3(3)(g) EUTMIR ). Trade marks combining sounds with other elements, namely movement, do not qualify as sound marks, but are considered multimedia marks. The acceptability of a sound mark must, like words or other types of trade marks, depend on whether the sound is distinctive per se , that is, whether the average consumer will perceive the sound as a memorable one that serves to indicate that the goods or services are exclusively associated with one undertaking. A sound must have ‘a certain resonance’ (13/09/2016,

text: , SON D’UN JINGLE SONORE PLIM PLIM (sound mark), EU:T:2016:468, § 45) enabling the target consumer to perceive and consider it a mark. Such resonance is lacking where the sound is perceived as a functional element of the goods and services for which protection is sought or as an indicator without any intrinsic characteristic of its own (§ 24), for example, due to its excessive simplicity or banality (07/07/2021,

text: , KLANG EINES GERÄUSCHES, WELCHES MAN BEIM ÖFFNEN EINER GETRÄNKEDOSE HÖRT, EU:T:2021:420, § 24, 25, 27, 41). In applying the criteria for assessing the distinctive character of a trade mark, the examiner must take into account that the relevant public’s perception may be influenced by the nature of the sign for which registration is sought. In effect, the relevant public’s perception is not necessarily the same in the case of a sign consisting of a sound per se as it is in the case of a word or figurative mark consisting of a sign that bears no relation to the appearance of the goods it denotes. Consumers are not in the habit of making assumptions about the origin of goods in the absence of any graphic or word element because, generally, a sound per se is not commonly used in any field of commercial practice as a means of identification. However, marketing habits in an economic sector are not fixed and can evolve in a very dynamic way, including as regards the use of sound marks. For example, it is well known that operators in the food market, characterised by strong competition, have to package their goods for marketing and are highly motivated to ensure that their goods can be identified in order to attract the consumers’ attention, including through sound marks and marketing and advertising efforts. (07/07/2021,

text: , KLANG EINES GERÄUSCHES, WELCHES MAN BEIM ÖFFNEN EINER GETRÄNKEDOSE HÖRT, EU:T:2021:420, § 26). The kinds of sound marks that are unlikely to be accepted without evidence of factual distinctiveness include: 1. very simple pieces of music consisting of only one or two notes (see examples below);

text: 2. sounds that are in the common domain (e.g. La Marseillaise, Für Elise); 3. sounds that are too long to be considered as an indication of origin; 4. sounds typically linked to specific goods and services (see examples below).

text: Where the sign applied for consists of a non-distinctive sound but includes other distinctive elements , such as words or lyrics, it will be considered as a whole.

text: In the framework of the European Union Intellectual Property Network, the trade mark offices of the European Union have agreed on a Common Communication on New Types of Marks: Examination of Formal Requirements and Grounds for Refusal ( CP11 ). They agreed on examples of sound marks that are considered to be distinctive/non-distinctive in relation to the corresponding goods and/or services. Some examples are reproduced below, further examples can be found in the CP11 .

text: Examples of non-acceptable trade marks

text: Examples of acceptable trade marks

text: 16 Motion marks

text: Article 3(3)(h) EUTMIR describes a motion mark as a trade mark consisting of, or extending to, a movement or a change in position of the elements of the mark. The term ‘extending to’ means that these marks cover not only the motion per se but also movements that contain word or figurative elements such as logos or labels.

text: The proposed definition does not restrict motion marks to those depicting movement. A sign may also qualify as a motion mark if it is capable of showing a change in the position of the elements (e.g. a sequence of stills), a change of colour or a change of elements understood as the replacement of one image by another. Motion marks do not include sound (see multimedia marks below).

text: In the absence of relevant case-law, the general criteria for assessing distinctiveness will apply to these marks. The mark will be distinctive within the meaning of Article 7(1) (b) EUTMR if it can identify the goods and/or services for which registration is sought as originating from a particular undertaking, and thus distinguish them from those of other undertakings. This distinctiveness will be assessed by reference, first, to the goods or services for which registration is sought and, second, to the relevant public’s

text: perception of that sign. These marks will not necessarily be perceived by the relevant public in the same way as a word or figurative mark.

text: In the framework of the European Union Intellectual Property Network, the trade mark offices of the European Union have agreed on a Common Practice in relation to new types of marks: examination of formal requirements and grounds for refusal. They agreed on examples of motion marks that are considered to be distincitve/nondistinctive in relation to the corresponding goods and/or services. Some examples are reproduced below, further examples can be found in the CP11 Common Practice document.

text: Examples of accepted trade marks

text: Examples of non-acceptable trade marks

text: 17 Multimedia marks

text: According to Article 3(3)(i) EUTMIR, a multimedia mark is a trade mark consisting of, or extending to, the combination of image and sound. The term ‘extending to’ means that these marks cover not only the combination of sound and image per se but also combinations that include word or figurative elements.

text: perception of that sign. The relevant public will not necessarily perceive these marks in the same way as a word or figurative mark.

text: In the framework of the European Union Intellectual Property Network, the trade mark offices of the European Union have agreed on a Common Practice in relation to new types of marks: examination of formal requirements and grounds for refusal. They agreed on examples of multimedia marks that are considered distinctive/non-distinctive for the corresponding goods and/or services. Some examples are shown below; further examples can be found in the Common Communication on New Types of Marks: Examination of Formal Requirements and Grounds for Refusal (CP11).

text: Examples of acceptable trade marks

text: Examples of non-acceptable trade marks

text: 18 Hologram marks

text: Article 3(3)(j) EUTMIR defines a hologram mark as a trade mark consisting of elements with holographic characteristics. In the absence of relevant case-law, the general criteria for assessing distinctiveness will apply to these marks. The mark will be distinctive within the meaning of Article 7(1) (b) EUTMR if it can identify the goods and/or services for which registration is sought as originating from a particular undertaking, and thus distinguish them from those of other undertakings. This distinctiveness will be assessed by reference, first, to the goods or services for which registration is sought and, second, to the relevant public’s perception of that sign. The relevant public will not necessarily perceive these marks in the same way as a word or figurative mark. In the framework of the European Union Intellectual Property Network, the trade mark offices of the European Union have agreed on a Common Practice in relation to new types of marks: examination of formal requirements and grounds for refusal. They agreed on examples of hologram marks that are considered distinctivee/non-distinctive for the corresponding goods and/or services. An example is reproduced below; further examples can be found in the Common Communication on New Types of Marks: Examination of Formal Requirements and Grounds for Refusal (CP11).

text: Example of an acceptable trade mark

text: Part B Examination Section 4 Absolute grounds for refusal Chapter 4

text: 1 General Remarks

text: 1.1 The notion of descriptiveness

text: A sign must be refused as descriptive if it has a meaning that is immediately perceived by the relevant public as providing information about the goods and services applied for. This is the case where the sign provides information about, inter alia, the quantity, quality, characteristics, purpose, kind and/or size of the goods or services. The relationship between the term and the goods and services must be sufficiently direct and specific (20/07/2004,

text: , Limo, EU:T:2004:245, § 30; 30/11/2004,

text: , Nurseryroom, EU:T:2004:347, § 20), as well as concrete, direct and understood without further reflection (26/10/2000,

text: , Trustedlink, EU:T:2000:246, § 35). If a mark is descriptive, it is also non-distinctive. Article 7(1)(c) EUTMR does not apply to those terms that are only suggestive or allusive as regards certain characteristics of the goods and/or services. Sometimes this is also referred to as vague or indirect references to the goods and/or services (31/01/2001,

text: , Cine Action, EU:T:2001:30, § 29). The public interest underlying Article 7(1)(c) EUTMR is that exclusive rights should not exist for purely descriptive terms that other traders might wish to use as well. However, it is not necessary for the Office to show that there is already a descriptive use by the applicant or its competitors. Consequently, the number of competitors that could be affected is totally irrelevant. Therefore, if a word is descriptive in its ordinary and plain meaning, this ground for refusal cannot be overcome by showing that the applicant is the only person who produces, or is capable of producing, the goods in question. Regarding the baseline for objections, see the Guidelines, Part B, Examination, Section 4, Absolute grounds for refusal, Chapter 1, General principles, paragraph 4.2

text: The term ‘characteristic’ in Article 7(1)(c) EUTMR designates a property, easily recognisable by the relevant public for the goods or the services in respect of which registration is sought. Consequently, a sign can be refused registration under this provision only if it is reasonable to believe that it will actually be recognised by the relevant public as a description of one of those characteristics (10/03/2011,

text: P, 1000, EU:C:2011:139, § 50). It is irrelevant whether this characteristic is commercially essential or ancillary (16/10/2014,

text: , Graphene, EU:T:2014:891, § 20). However, a characteristic within the meaning of Article 7(1)(c) EUTMR must be ‘objective’ and ‘inherent to the nature of that product’ or service (06/09/2018,

text: P, NEUSCHWANSTEIN, EU:C:2018:673, § 44) and ‘intrinsic and permanent’ with regard to that product or service (07/05/2019,

text: , vita, EU:T:2019:291, § 44).

text: Kind of goods and services This includes the goods or services themselves, that is, their type or nature. For example, ‘bank’ for financial services, Perle’ for wines and sparkling wines (01/02/2013,

text: , Perle’, EU:T:2013:51,) or ‘Universaltelefonbuch’ for a universal telephone directory (14/06/2001,

text: , Universaltelefonbuch, EU:T:2001:162) or constituent parts or components of the goods (15/01/2013,

text: , EcoDoor, EU:T:2013:14, § 26). The kind of goods or services can be described by reference to a ‘negative’ characteristic of the goods or services for which protection is sought. A sign perceived as providing information about a ‘negative’ characteristic of a product or a service does not prevent the sign from being descriptive of one of its easily recognisable properties, as long as it refers to an objective property inherent to the nature of those products (08/05/2024,

text: , NOT MILK (fig.), EU:T:2024:288, § 42-43). Quality This includes both laudatory terms, referring to a superior quality of the respective goods or services, as well as the inherent quality of the goods or services. It covers terms such as ‘light’, ‘extra’, ‘fresh’, ‘hyper light’ for goods that can be extremely light (27/06/2001, R 1215/2000‑3, Hyperlite). In addition, figures may refer to the quality of a product or a service, such as 24/7 for service availability; ‘2000’, which refers to the size of the motor or ‘75’, which refers to the horse power (kW) of the motor. Quantity This covers indications of the quantity in which the goods could be sold, such as ‘six pack’ for beer, ‘one litre’ for drinks, ‘100’ (grams) for chocolate bars. Only quantity measurements relevant in trade, not those that are hypothetically possible, count. For example, 99.999 for bananas would be acceptable. Intended purpose The intended purpose is the function of a product or service, the result that is expected from its use or, more generally, the use for which the good or service is intended. An example is ‘Trustedlink’ for goods and services in the IT sector aimed at securing a safe (trusted) link (26/10/2000,

text: , Trustedlink, EU:T:2000:246). Marks that have been refused registration on this basis include ‘Therapy’ for massage tools (08/09/1999, R 144/1999‑3, THERAPY) and ‘Slim belly’ for fitness training apparatus, sport activities, medical and beauty care services (30/04/2013,

text: , Slim belly, EU:T:2013:226). This objection also applies as regards accessories: a term that described the type of goods also describes the intended purpose for accessories to those goods. Therefore, ‘Rockbass’ is liable to objection for accessories for rock guitars (08/06/2005,

text: , Rockbass, EU:T:2005:211 (appeal

text: P settled)). Value This covers both the (high or low) price to be paid, as well as the value in quality. It therefore does not only refer to expressions such as ‘extra’ or ‘top’, but also expressions such as ‘cheap’ or ‘more for your money’. It also includes expressions indicating, in common parlance, goods or services that are superior in quality.

text: Geographical origin See paragraph 2.6. Time of production of the goods or of rendering of the service This covers expressions concerning the time at which services are rendered, either expressly (‘evening news’, ‘24 hours’) or in a usual manner (24/7). It also covers the time at which goods are produced if that is relevant for the goods (late vintage for wine). For wine, the numeral ‘1998’ indicating the vintage year would be relevant, but not for chocolate. Other characteristics This covers other characteristics of the goods or services and shows that the preceding list of items in Article 7(1)(c) EUTMR is not exhaustive. In principle, any characteristic of the goods and services must lead to a refusal under Article 7(1)(c) EUTMR. It does not matter whether the characteristics of the goods or services are commercially essential or merely ancillary or whether there are synonyms of those characteristics (12/02/2004,

text: , Postkantoor, EU:C:2004:86, § 102; 24/04/2012,

text: , EcoPerfect, EU:T:2012:197, § 41).

text: Examples of ‘other characteristics’

text: the subject matter contained within the goods or services for which protection is

text: sought: (see paragraph 2.7); the identification of the targeted consumer: ‘BIMBO’ [Italian word for ‘child’] for

text: bread (18/03/2016,

text: , BIMBO, EU:T:2016:159) or ‘ellos’ [Spanish word for ‘they/them’] for clothing (27/02/2002,

text: , Ellos, EU:T:2002:44).

text: 1.3 Common misunderstandings

text: Applicants often put forward arguments that have already been declared irrelevant by the courts. These arguments will be dismissed by the Office in its decision.

text: 1.3.1 Term not used

text: The fact that a descriptive use of the term applied for cannot be ascertained is irrelevant. Examination of Article 7(1)(c) EUTMR has to be made by means of prognostics (assuming that the mark will be used with respect to the goods or services claimed). It follows clearly from the text of Article 7(1)(c) EUTMR that it suffices if the mark ‘may serve’ to designate characteristics of the goods and services (23/10/2003,

text: P, Doublemint, EU:C:2003:579, § 33).

text: 1.3.2 Need to keep free

text: It is frequently claimed that other traders do not need the term applied for, can use more direct and straightforward indications or have synonyms at their disposal to

text: describe the respective characteristics of the goods. All these arguments must be refused as irrelevant. Although there is a public interest underlying Article 7(1)(c) EUTMR that descriptive terms should not be registered as trade marks so as to remain freely available to all competitors, it is not necessary for the Office to show that there is, on the part of third parties, a present or future need to use, or concrete interest in using, the descriptive term applied for (no konkretes Freihaltebedürfnis) (04/05/1999,

text: , Chiemsee, EU:C:1999:230, § 35; 12/02/2004,

text: , Postkantoor, EU:C:2004:86, § 61). Whether there are synonyms or other, even more usual, ways of expressing the descriptive meaning is thus irrelevant (12/02/2004,

text: , Biomild, EU:C:2004:87, § 42).

text: 1.3.3 Factual monopoly

text: The fact that the applicant is the only person offering the goods and services for which the mark is descriptive is not relevant for Article 7(1)(c) EUTMR. However, in this case the applicant will be more likely to succeed on acquired distinctiveness.

text: 1.3.4 Double meaning

text: The argument frequently put forward by applicants that the terms applied for have more than one meaning, one of them not being descriptive for the goods/services, should be rejected. It suffices for a refusal under Article 7(1)(c) EUTMR if at least one of the possible meanings of the term is descriptive in relation to the relevant goods and services (23/10/2003,

text: P, Doublemint, EU:C:2003:579, § 32; confirmed by 12/02/2004,

text: , Postkantoor, EU:C:2004:86, § 97). Given that the examination must focus on the goods/services covered by the application, arguments concerning other possible meanings of the word(s) making up the trade mark applied for (that are unrelated to the goods/services concerned) are irrelevant. Equally, when the trade mark applied for is a composite word mark, what matters for examination purposes is the meaning, if any, associated with the sign considered as a whole, and not the possible meanings of its individual elements considered separately (08/06/2005,

text: , Rockbass, EU:T:2005:211, § 56).

text: 2 Word Marks

text: 2.1 One word

text: Descriptive terms are those that merely consist of information about the characteristics of the goods and services. This means that descriptive terms cannot fulfil the function of a trade mark. Consequently, the ground for refusal applies irrespective of whether a

text: term is already used by other competitors in a descriptive manner for the goods and services at issue. In particular, a word is descriptive if either for the general public (if the goods or services target them) or for a specialised public (irrespective of whether the goods or services also target the general public) the trade mark has a descriptive meaning. The term ‘RESTORE’, is descriptive for surgical and medical instruments and

text: apparatus; stents; catheters; and guide wires (17/01/2013,

text: P, Restore, EU:C:2013:23). ‘CONTINENTAL’ is descriptive for ‘live animals, that is to say, dogs’ and ‘the keeping

text: and breeding of dogs, that is to say, puppies and animals for breeding’. Indeed, the word ‘Continental’ indicates a breed of bulldogs (17/04/2013,

text: , Continental, EU:T:2013:193). ‘TRILOBULAR’ is descriptive for screws. It would be immediately perceived by

text: professionals as describing the fact that the screw is made up of three lobes, and thus describes a quality or characteristic, which is, moreover fundamental, of those goods (18/11/2015,

text: , TRILOBULAR, EU:T:2015:858, § 32). Furthermore, as seen above, objections should also be raised against terms that describe desirable characteristics of the goods and services. However, it is important to distinguish laudatory terms that describe — although in general terms — desirable characteristics of goods and services as being cheap, convenient, of high quality, etc. and that are excluded from registration, from those terms that are laudatory in a broader sense, that is to say, they refer to vague positive connotations or to the person of the purchaser or producer of the goods without specifically referring to the goods and services themselves. Not descriptive: ‘BRAVO’, as it is unclear who says ‘BRAVO’ to whom, and what is being praised

text: , Bravo, EU:C:2001:510).

text: 2.2 Combinations of words

text: As a general rule, a mere combination of elements, each of which is descriptive of characteristics of the goods or services themselves, remains descriptive of those characteristics. Merely bringing those elements together without introducing unusual variations, in particular as to syntax or meaning, cannot result in anything other than a descriptive sign. However, if due to the unusual nature of the combination in relation to the goods or services, a combination creates an impression that is sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which it is composed, that combination will be considered more than the sum of its parts (12/02/2004,

text: , Biomild, EU:C:2004:87, § 39, 43). These notions, ‘unusual nature of the combination’, ‘impression sufficiently far removed’ and ‘more than the sum of its parts’ have to be interpreted as meaning that Article 7(1)(c) EUTMR does

text: not apply when the way in which the two descriptive elements are combined is in itself fanciful. The following examples have been refused registration: ‘Biomild’ for yoghurt being mild and organic (12/02/2004,

text: , Biomild,

text: EU:C:2004:87); ‘Companyline’ for insurance and financial affairs (19/09/2002,

text: P,

text: Companyline, EU:C:2002:506); ‘Trustedlink’ for software for e-commerce, business consulting services, software

text: integration services and education services for e-commerce technologies and services (26/10/2000,

text: , Trustedlink, EU:T:2000:246); ‘Cine Comedy’ for the broadcast of radio and television programmes, production,

text: showing and rental of films, and allocation, transfer, rental and other exploitation of rights to films (31/01/2001,

text: , Cine Comedy, EU:T:2001:31); ‘Teleaid’ for electronic devices for transferring speech and data, repair services for

text: automobiles and vehicle repair, operation of a communications network, towing and rescue services and computing services for determining vehicle location (20/03/2002,

text: , Tele Aid, EU:T:2002:79); ‘Quick-gripp’ for hand tools, clamps and parts for tools and clamps (27/05/2004,

text: , Quick-Grip, EU:T:2004:161); ‘Twist and Pour’ for handheld plastic containers sold as an integral part of a liquid

text: paint containing, storage and pouring device (12/06/2007,

text: , Twist & Pour, EU:T:2007:171); ‘CLEARWIFI’ for telecommunications services, namely high-speed access

text: to computer and communication networks (19/11/2009,

text: , Clearwifi, EU:T:2009:458); ‘STEAM GLIDE’ for electric irons, electric flat irons, electric irons for ironing clothes,

text: parts and fittings for the aforementioned goods (16/01/2013,

text: , Steam Glide, EU:T:2013:20); ‘GREENWORLD’ for, inter alia, gas fuels, fuels, electric power, gas for lighting, retail

text: services in the areas of fuels, transmission and transport of electrical energy, heat, gas or water (27/02/2015,

text: , Greenworld, EU:T:2015:123); ‘Greenline’ for goods in Classes 1, 5, 6, 8, 20 and 21 that can conform to a

text: philosophy of care for the environment (30/03/2007, R 125/2007-2, GREENLINE, § 15-22); ‘ecoDOOR’ for products on which doors have a significant impact, such

text: as dishwashers, washing machines, vending machines, apparatus for cooking (10/07/2014,

text: P, EcoDoor, EU:C:2014:2065). In the same way, combinations of the prefix ‘EURO’ with purely descriptive terms must be refused where the ‘EURO’ element reinforces the descriptiveness of the sign as a whole or where there is a reasonable connection between that term and the goods or services concerned. This is in line with the judgment of 07/06/2001,

text: , EuroHealth, EU:T:2001:151. The following examples have been accepted for registration: GREENSEA for goods and services in Classes 1, 3, 5 and 42;

text: MADRIDEXPORTA for Classes 16, 35, 36, 38, 39, 41 and 42 (16/09/2009,

text: , Madridexporta, EU:T:2009:334); DELI FRIENDS for Classes 29, 30 and 35.

text: Combinations not following grammatical rules A combination of words can be considered a descriptive indication even though it does not follow the usual grammatical rules. If, however, the combination does amount to more than the mere sum of its parts, it may be acceptable (17/10/2007,

text: , WinDVD Creator, EU:T:2007:309, § 34). ‘HIPERDRIVE’ is considered descriptive of the intended purpose of setting devices

text: for tools, despite the misspelling of the adjective ‘hyper’ as ‘hiper’ (22/05/2014,

text: , Hiperdrive, EU:T:2014:270, § 33-42). ‘CARBON GREEN’ is descriptive for reclaimed rubber, namely, recycled

text: carbonaceous materials, namely plastic, elastomeric, or rubber filled materials obtained from pyrolysed tire char and plastic, elastomeric, or rubber compounds formulated using such filler material, even though adjectives precede nouns in English (11/04/2013,

text: , Carbon green, EU:T:2013:165). Furthermore, in the world of advertising, definite articles and pronouns (the, it, etc.), conjunctions (or, and, etc.) or prepositions (of, for, etc.) are frequently omitted. This means that a lack of these grammatical elements will sometimes not be sufficient to make the mark distinctive. Combinations of adjectives + nouns or verbs For combinations consisting of nouns and adjectives, it should be assessed whether the meaning of the combination changes if its elements are inverted. For example, ‘Vacations direct’ (not registrable, 23/01/2001, R 33/2000-3) is tantamount to ‘direct vacations’, whereas ‘BestPartner’, is not the same thing as ‘PartnerBest’. The same reasoning applies to words consisting of the combination of an adjective and a verb. Therefore, the word ‘ULTRAPROTECT’ must be considered descriptive for sterilising and sanitary preparations, even though it consists of the combination (grammatically incorrect) of an adjective (ULTRA) with a verb (PROTECT), since its meaning remains clearly understandable (03/06/2013, R 1595/2012-1, ULTRAPROTECT; 06/03/2012,

text: , Highprotect, EU:T:2012:107). Combinations of words in different languages Combinations made up of words from different languages may still be liable to objection if the relevant consumers will understand the descriptive meaning of all the elements without further effort. This may be the case, in particular, when the sign contains basic terms in a language that will be understood easily by the speakers of another language, or if the terms are similar in both languages. For instance, if a mark is composed of one basic descriptive term belonging to language ‘A’ and another descriptive word in language ‘B’, the sign as a whole will remain descriptive when it is assumed that the speakers of language ‘B’ will be able to grasp the meaning of the first term.

text: Die virtuelle Industriemesse — Il salon virtuale dell’industria — El salon virtual de la industria’ for services in Classes 35, 38 and 42. The following examples have been refused registration: EUTM No 12 596 169 ‘BABYPATAUGEOIRE’ for Classes 20 and 42 related to

text: chairs and design of chairs for babies. The sign is composed of an EN and a FR term that will be immediately understood by the French-speaking part of the public (the term ‘baby’ will be understood by the French-speaking part of the public); ‘EURO AUTOMATIC PAIEMENT’, for Classes 9 and 36 (05/09/2012,

text: , Euro

text: automatic paiement, EU:T:2012:402, combination of English and French terms).

text: 2.3 Misspellings and omissions

text: A misspelling does not necessarily change the descriptive character of a sign. First of all, words may be misspelt due to influences from another language or the spelling of a word in non-EU areas, such as American English, in slang or to make the word more fashionable. Examples of signs that have been refused: ‘Xtra’ (27/05/1998, R 20/1997-1);

text: ‘Xpert’ (27/07/1999, R 230/1998-3);

text: ‘Easi-Cash’ (20/11/1998, R 96/1998-1);

text: ‘Lite’ (27/02/2002,

text: , Lite, EU:T:2002:42);

text: ‘Rely-able’ (30/04/2013,

text: , Rely-able, EU:T:2013:225);

text: ‘FRESHHH’ (26/11/2008,

text: , Freshhh, EU:T:2008:528).

text: Furthermore, consumers will, without further mental steps, understand the ‘@’ as the letter ‘a’ or the word ‘at’ and the ‘€’ as the letter ‘e’. Consumers will replace specific numerals by words, for example, ‘2’ as ‘to’ or ‘4’ as ‘for’. However, if the misspelling is fanciful and/or striking or changes the meaning of the word (accepted: ‘D’LICIOUS’, EUTM No 13 729 348 (instead of ‘delicious’), ‘FANTASTICK’, EUTM No 13 820 378 (instead of ‘fantastic’)), the sign is acceptable. As a rule, misspellings endow the sign with a sufficient degree of distinctive character when: they are striking, surprising, unusual, arbitrary and/or;

text: they are capable of changing the meaning of the word element or require some

text: mental effort from the consumer in order to make an immediate and direct link with the term that they supposedly refer to.

text: The following marks were refused.

text: However, the following marks were accepted.

text: 2.4 Abbreviations and acronyms

text: Abbreviations of descriptive terms are in themselves descriptive if they are used in that way, and the relevant public, whether general or specialised, recognises them as being identical to the full descriptive meaning. The mere fact that an abbreviation is derived from a descriptive term is not sufficient (13/06/2014,

text: , Flexi, EU:T:2014:519). The following signs were refused because the descriptive meaning for the relevant public could clearly be shown: SnTEM (12/01/2005,

text: , SnTEM, SnPUR & SnMIX, EU:T:2005:3);

text: TDI 03/12/2003,

text: , TDI, EU:T:2003:327 (appeal

text: P was settled);

text: LIMO (20/07/2004,

text: , Limo, EU:T:2004:245);

text: BioID (05/12/2002,

text: , BioID, EU:T:2002:300 (appeal

text: P set aside the

text: Court’s judgment and dismissed the decision of the second BoA)). Note that use of internet databases such as ‘AcronymFinder.com’ as a reference base should be made with due consideration. Use of technical reference books or scientific literature is preferable, for example, in the field of computing. Alternatively, use of the abbreviation by a number of traders in the appropriate field on the internet is sufficient to substantiate actual use of the abbreviation. Signs consisting of an independently non-descriptive acronym that precedes or follows a descriptive word combination should be objected to as descriptive if it is perceived by the relevant public as merely a word combined with an abbreviation of that word combination, for example ‘Multi Markets Fund MMF’. This is because the acronym and

text: word combination together are intended to clarify each other and to draw attention to the fact that they are linked (15/03/2012,

text: , Natur-Aktien-Index / Multi Markets Fund, EU:C:2012:147, § 32, 34, 40). This will be the case even where the acronym does not account for the mere ‘accessories’ in the word combination, such as articles, prepositions or punctuation marks, such as in the following example: ‘The Statistical Analysis Corporation — SAC’. While the above rule will cover most cases, not all instances of descriptive word combinations juxtaposed with an abbreviation of that word will be considered descriptive as a whole. This will be the case where the relevant public will not immediately perceive the acronym as an abbreviation of the descriptive word combination, but rather as a distinctive element that will make the sign as a whole more than the sum of its individual parts, as demonstrated in the following example: ‘The Organic Red Tomato Soup Company — ORTS’.

text: 2.5 Slogans

text: A slogan gives rise to an objection under Article 7(1)(c) EUTMR when it immediately conveys the kind, quality, intended purpose or other characteristics of the goods or services. The criteria established by case-law for the purpose of determining whether a slogan is descriptive or not are identical to those applied in the case of a word mark containing only a single element (06/11/2007,

text: , Vom Ursprung her vollkommen, EU:T:2007:330, § 21). It is inappropriate to apply criteria to slogans that are stricter than those applicable to other types of signs, especially considering that the term ‘slogan’ does not refer to a special subcategory of signs (12/07/2012,

text: P, Wir machen das Besondere einfach, EU:C:2012:460, § 26, 40). Example of a descriptive slogan An application in Class 9 (satellite navigation systems, etc.) for ‘FIND YOUR WAY’,

text: (18/07/2007, R 1184/2006-4) was objected to under Article 7(1)(b) and (c) EUTMR. The expression ‘FIND YOUR WAY’ in relation to the goods applied for in Class 9 is clearly intended to inform the relevant consumer that the appellant’s goods help consumers to identify geographical locations in order to find their way. The message conveyed by the sign applied for directly refers to the fact that consumers will discover the route for travelling from one place to another when using the specified goods. ‘BUILT TO RESIST’ could have only one possible meaning in relation to paper,

text: paper goods and office requisites in Class 16, leather, imitations of leather, travel articles not included in other classes and saddlery in Class 18 and clothing, footwear and headgear in Class 25, namely that the goods are manufactured to last and are, therefore, tough and resistant to wear and tear (16/09/2009,

text: , Built to resist, EU:T:2009:332, § 27-28). Example of a non-descriptive slogan

text: ‘WET DUST CAN’T FLY’ does not describe the way in which the cleaning

text: preparations, appliances and services in Classes 3, 7 and 37 operate. Cleaning preparations are not designed to moisten dust in order to prevent it from dispersing, but to make the dirt disintegrate and disappear. Cleaning appliances filter the dust through liquids but are not designed to dampen the dust in order to prevent it from flying (22/01/2015,

text: , WET DUST CAN’T FLY, EU:T:2015:46, § 23-24, 27). The Office and 25 EU IP offices have agreed on a Common Communication on the Common Practice on the Distinctive Character of Slogans (also referred to as CP17). Common Communication CP17 establishes the concept of a slogan, provides a nonexhaustive list of factors for assessing the distinctive character of slogans and includes illustrative examples.

text: 2.6 Geographical terms

text: 2.6.1 Preliminary remarks

text: A geographical term is every existing name of a place, for example a country, region, city, lake or river. This list is not exhaustive. Adjectival forms are not sufficiently different from the original geographical term to cause the relevant public to think of something other than that geographical term (15/10/2003,

text: , Oldenburger, EU:T:2003:267, § 39). For example, ‘German’ will still be perceived as referring to Germany, and ‘French’ will still be perceived as referring to France. Furthermore, outdated terms such as ‘Ceylon’, ‘Bombay’ and ‘Burma’ fall within this scope if they are still commonly used or generally understood by consumers as a designation of origin. It is in the public interest that signs that may serve to designate the geographical origin of goods or services remain available, not least because they may be an indication of the quality and other characteristics of the categories of goods concerned, and may also, in various ways, influence consumer preferences by, for instance, associating the goods or services with a place that may elicit a favourable response (15/01/2015,

text: , MONACO, EU:T:2015:16, § 47; 25/10/2005,

text: , Cloppenburg, EU:T:2005:373, § 33). This paragraph (2.6) uses the words ‘geographical term’ to refer to any geographical indication in an EUTM application, whereas the terms ‘protected geographical indication’ and ‘protected designation or appellation of origin’ are used only in the context of specific legislation protecting them. Designations of origin and geographical indications protected under specific EU regulations are dealt with under the section on Article 7(1)(j) EUTMR.

text: 2.6.2 Assessment of geographical terms

text: The registration of geographical names as trade marks is not possible where such a geographical name is either already famous, or is known for the category of goods concerned, and is therefore associated with those goods or services in the

text: mind of the relevant class of persons, or it is reasonable to assume that the term may, in view of the relevant public, designate the geographical origin of the category of goods and/or services concerned (15/01/2015,

text: , MONACO, EU:T:2015:16, § 48; 25/10/2005,

text: , Cloppenburg, EU:T:2005:373, § 34). As with all other descriptive terms, the test is whether the geographical term describes objective characteristics of the goods and services. The assessment must be made with reference to the goods and services for which protection is sought and with reference to the perception by the relevant public. Under this part of the Guidelines, the descriptive character of the geographical term may relate to: the place of production of the goods;

text: the place where the goods were conceived and designed (06/09/2018,

text: P,

text: NEUSCHWANSTEIN, EU:C:2018:673, § 48); the place where the services are rendered;

text: the place that influences consumer preferences (e.g. lifestyle) by eliciting a

text: favourable response (15/01/2015,

text: , Cloppenburg, EU:T:2005:373, § 33. The use of geographical names as trade marks is also dealt with in other parts of the Guidelines. For example, where such a sign indicates the subject matter of the goods and/or services, the relevant part of the Guidelines applies (i.e. paragraph 2.7 below on subject matter). The following two-step assessment must be carried out when assessing geographical names as trade marks. First step: term is understood by the relevant public as a geographical name. The first step in assessing a geographical term is to determine whether it is understood as such by the relevant public. Article 7(1)(c) EUTMR does not in principle preclude the registration of geographical names that are unknown to the relevant public — or at least unknown as the designation of a geographical location (15/01/2015,

text: , MONACO, EU:T:2015:16, § 49;

text: , Cloppenburg, EU:T:2005:373, § 36). Whether or not this is the case will be determined by taking as a basis a reasonably well-informed consumer who has sufficient common knowledge but is not a specialist in geography. For an objection to be raised, the Office must prove that the geographical term is known by the relevant public as designating a place (15/01/2015,

text: , MONACO, EU:T:2015:16, § 51). Second step: term either (a) designates a place associated with the goods and services or (b) may be reasonably assumed to designate the geographical origin of the goods and services. The second step is to determine whether the geographical term applied for designates a place that is currently associated with the claimed goods or services in the mind of the relevant public or whether it is reasonable to assume that it will be associated with those goods or services in the future (04/05/1999,

text: , Chiemsee, EU:C:1999:230, § 31), or whether such a name may, in the

text: mind of the relevant public, designate the geographical origin of that category of goods or services (15/01/2015,

text: , MONACO, EU:T:2015:16, § 48;

text: , Cloppenburg, EU:T:2005:373, § 34). In establishing whether such an association exists, the Court has clarified that the following factors should be taken into account (04/05/1999,

text: , Chiemsee, EU:C:1999:230, § 32, 37;

text: , Cloppenburg, EU:T:2005:373, § 38), namely the degree of familiarity with: the geographical term;

text: the characteristics of the place designated by the term; and

text: the category of goods or services.

text: 1. Places currently associated with the claimed goods or services Geographical names that designate specified geographical locations that are already famous or are known for the category of goods or services concerned, and that are therefore associated with that category in the mind of the relevant class of persons, may not be registered as trade marks (15/10/2003,

text: , Oldenburger, EU:T:2003:267, § 31). For example, ‘Milano’ should be refused for clothing, ‘Frankfurt’ for financial services, ‘Islas Canarias’ for sightseeing, tour guide and excursion services and ‘Switzerland’ for banking services, cosmetic products, chocolate and watches.

text: 2. A reasonable assumption can be made that a place will be associated with those goods or services in the future or that a name may, in the mind of the relevant public, designate the geographical origin of that category of goods or services. In establishing whether the abovementioned assumption can reasonably be made, the following circumstances should be considered: ○ There are some geographical terms, such as the names of regions or countries, that enjoy widespread recognition and fame for the high quality of their goods and/or services. When a sign consists of such geographical terms, there is no need for a detailed assessment of the association between the place and each (category) of the goods and/or services. Such signs may be refused on the basis of being perceived as a reference to the quality of the goods and/or services, namely that linked with the geographical term (15/12/2011,

text: , Passionately Swiss, EU:T:2011:753, § 43-45). ○ Nature and size of the geographical location in question. There is generally a correlation between geographical size, variety of goods and/or services made available in the place concerned and corresponding knowledge or expectations on the part of consumers. In that regard, it is assumed that the name of a country will, in principle, be associated with the relevant goods and/or services and that the public will accordingly perceive a country name as an indication of the geographical origin of the goods and/or services. This assumption, however, does not automatically rule out the need for an assessment of whether or not the public actually establishes such a descriptive link between the sign and the goods and/or services. Moreover, in line with the nature of the location, its

text: characteristics should be taken into account. Characteristics such as natural conditions, industries typical to the geographical location or a tradition of manufacturing the goods in question are important factors to be taken into account. The mere fact that some production of the relevant goods or provision of the relevant services is located in the geographical place in question is not per se sufficient to support the abovementioned assumption. ○ Market sectors. It must be borne in mind that, in certain market sectors, such as the car or furniture industries, it is common to use place names without a real geographical connotation, for example to designate models or range of products. It is not necessary to establish that the name actually designates the true geographical origin of the goods. It is enough to demonstrate that the connection between the name of the place and the goods may enable the relevant public to perceive the contested sign as an indication of the origin of those goods (15/10/2003,

text: , Oldenburger, EU:T:2003:267, § 43). A refusal on the grounds of Article 7(1)(c) EUTMR cannot be based solely on the argument that the goods and/or services can theoretically be produced or rendered in the place designated by the geographical term (08/07/2009,

text: , Alaska, EU:T:2009:257). Consequently, if it can be concluded that there is a particular relationship between the geographical place designated by the sign and the goods and/or services for which the protection is sought, the Office will raise an objection.

text: The mere fact that a geographical term is used by only one producer is not sufficient to overcome an objection, although it is an important argument to be taken into account in assessing acquired distinctiveness.

text: The following marks were refused:

text: The following marks were registered: ○ HOLLYWOOD for goods in Class 30 (EUTM No 31 450) ○ GREENLAND for fresh fruits and vegetables (30/09/2002, R 691/2000-1, Greenland) ○ DENVER for lighting equipment (03/04/2013, R 2607/2011-2, DENVER) ○ PORT LOUIS in Classes 18, 24 and 25 (15/10/2008,

text: , Port Louis, EU:T:2008:443).

text: 2.7 Terms describing subject matter in goods or services

text: 2.7.1 General considerations

text: Where a sign consists exclusively of a word that describes what may be the subject matter or content of the goods or services in question, it should be objected to under Article 7(1)(c) EUTMR. Commonly known terms likely to be linked to a particular thing, product or activity by the relevant public are capable of describing subject matter and should therefore be kept free for other traders (12/06/2007,

text: , Lokthread, EU:T:2007:172, § 27). The essential question is whether the sign applied for may be used in trade in relation to the goods or services applied for in a manner that will be undoubtedly perceived by the relevant public as descriptive of the subject matter of those goods or services for which protection is sought, and should therefore be kept free for other traders. For example, a widely known name such as ‘Vivaldi’ will immediately create a link to the famous composer, just as the term ‘skis’ will immediately create a link to the

text: matter regarding other things, products and/or activities (e.g. a book about history, or an educational course on history); when the sign consists exclusively of the word identifying that subject matter (e.g.

text: ‘VEHICLES’ or ‘HISTORY’); and will be made on a case-by-case basis by assessing multiple factors, such as the

text: relevant public, the degree of attention or the descriptive character of the term in question, or the market reality (see below). Goods and services that may contain subject matter For most cases, the goods or services that may consist of or contain subject matter that give rise to an objection are the following. Class 9: software, electronic publications (downloadable).

text: ○ Give rise to an objection — STATISTICAL ANALYSIS for software — ROCK MUSIC for CDs (a term that includes not only blank CDs but also recorded CDs). Class 16: Printed matter, photographs and teaching materials as long as these

text: include printed matter. ○ Give rise to an objection — HISTORY for books — PARIS for travel guides — CAR for magazines

text: ○ Give rise to an objection — ‘Memory’ (14/03/2011,

text: P, Memory, EU:C:2011:148). Class 35: Trade fairs, advertising, retail services, import-export services.

text: ○ Give rise to an objection — ELECTRONICA for trade fairs related to electronic goods (05/12/2000,

text: , Electronica, EU:T:2000:283, § 42-44) — LIVE CONCERT for advertising services — CLOTHING for retail services — PHARMACEUTICALS for import-export services. Class 41: Education, training, entertainment, electronic publications (non-

text: downloadable). ○ Give rise to an objection — GERMAN for language courses — HISTORY for education — COMEDY for television programmes — TRANSCENDENTAL MEDITATION for education services.

text: The above list of Nice classes is not exhaustive, although it will apply to the

text: vast majority of cases. Consequently, objections based on descriptive subject matter should be raised primarily in the context of the goods and services listed above. The Office and 25 EU IP offices have agreed on a Common Communication on the Common Practice on Signs Describing the Subject Matter of Goods and/or Services (also referred to as CP16). Common Communication CP16 establishes a common understanding of the notion of subject matter, as well as general principles on how to perform the assessment of signs describing the subject matter of the goods and/or services for which protection is sought, and provides illustrative examples.

text: 2.7.2 Titles of books

text: The fact that a sign applied for is the title of a book is not per se an obstacle for registration as a trade mark. However, the Office will refuse the mark when it can be perceived as describing the subject matter of the goods and services and thus has not the capacity to identify the commercial origin of the goods or services. Trade marks consisting solely of a book title may be descriptive under Article 7(1)(c) EUTMR in relation to goods and services that could be perceived as containing or dealing with the well-known story, a new version of it or a theme linked to the story. The reason for this is that certain stories (or their titles) have been established for so long and become so well known that they have ‘entered into the language’. They are

text: no longer linked exclusively with the original book, but have rather become well known, universal and autonomous commonplace expressions to denote a certain type of story or an entire genre. For example, ‘The Jungle Book’ or ‘Robinson Crusoe’ are book titles originally attributable to a particular literary work and a particular author (Rudyard Kipling; Daniel Defoe). Due to the enormous popularity of the books, and facilitated by the passing of time, their titles have, in the public’s perception, gradually gained a thematic significance, which extends beyond the actual content of the books concerned. They have entered into everyday language as synonyms for a particular type of story or genre (e.g. young humans succeeding on their own in the wilderness; struggle against nature, hardship, privation, loneliness). While such famous book titles might remain perfectly capable of being distinctive for paint, clothing or pencils, they will become incapable of performing a distinctive role in relation to goods and services that could merely have the general story or genre as their content (e.g. publications, data carriers or cultural events). The assessment of whether a book title has reached a sufficient degree of recognition depends on a thorough case-by-case analysis, taking account of the particularities of the individual case. The following, non-exhaustive considerations might assist in evaluating whether the title of a book would be perceived as descriptive of the subject matter of the goods and services and thus not capable of denoting the commercial origin of subject-related goods and services.

text: Adaptations

text: A finding of non-distinctiveness will be more likely where it can be shown that a large number of published versions of the story have appeared and/or where there have been numerous television, theatre and film adaptations reaching a wide audience.

text: Cultural Heritage

text: The fact that a book or its story is included in a high-profile encyclopaedia, that it frequently forms part of school/university curricula and that it is subject to ample scientific research and abstract analysis of its main themes might be an indicator that it is considered a ‘Classic’, that is to say, a book that has reached a universal importance that stretches beyond its actual content and that actively forms part of the cultural DNA of the general public (e.g. ‘The Odyssey’, ‘Cinderella’, ‘Romeo and Juliet’, ‘Don Quixote’).

text: Time

text: The more time has passed by since the publication of the original work, the more likely it becomes that a book’s plot, its characters and its title are no longer strictly connected to a particular author or the exact story, but have rather reached a status of autonomy. Depending on the mark in question, an objection may be taken in relation to printed matter, films, recordings, plays and shows (this is not an exhaustive list). Examples for book titles considered to be descriptive of the subject matter:

text: ‘Pinocchio’ (R 1856/2013-2): partly declared invalid for Classes 9, 16, 28, 41; ‘The Jungle Book’ (R 118/2014-1): partly rejected for Classes 9, 16, 41; ‘Winnetou’ (R 1297/2016-2): partly declared invalid for Classes 9, 16, 28, 41. Examples for book titles considered to be sufficiently distinctive: ‘Die Wanderhure’ (EUTM No 12 917 621): in Classes 9, 16, 35, 38 and 41; ‘Partners in crime’ (EUTM No 13 011 887): in Classes 9, 16 and 41.

text: 2.8 Single letters and numerals

text: Single letters ( )

text: General considerations

text: In its judgment of 09/09/2010,

text: P, α, EU:C:2010:508, the Court stated that when examining absolute grounds for refusal, the Office is required, under Article 95(1) EUTMR, to examine, of its own motion, the relevant facts that might lead it to raise an objection under Article 7(1) EUTMR and that that requirement cannot be made relative or reversed, to the detriment of the EUTM applicant (paras 55-58). Therefore, it is for the Office to explain, with motivated reasoning, why a trade mark consisting of a single letter represented in standard characters is descriptive. Consequently, when examining single letter trade marks, generic, unsubstantiated arguments such as those relating to the availability of signs, given the limited number of letters, should be avoided. Similarly, it would not be appropriate to base an objection on speculative reasoning as to the different meanings that a sign could possibly have. The Office is obliged to establish, on the basis of a factual assessment, why the trade mark applied for would be liable to objection. It is therefore clear that the examination of single letter trade marks should be thorough and stringent, and that each case calls for a careful examination.

text: Examples

text: For instance, in technical domains such as those involving computers, machines, motors and tools, it may be that particular letters have a descriptive connotation if they convey sufficiently precise information about the goods and/or services concerned. The letter ‘E’ was also considered to be descriptive in respect of wind power plants and parts thereof, generators, rotor blades for wind power plants, rotors for wind power plants in Class 7, control switches for wind power plants, frequency converters, measuring, signalling and checking (supervision) instruments, apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity in Class 9 and towers for wind power plants in Class 19, since it may be seen as a reference to energy or electricity (21/05/2008,

text: E, EU:T:2008:161, § 24-31; 08/09/2006, R 394/2006-1, E, § 22-26; 09/02/2015, R 1636/2014-2, E (fig.)). An objection might also be justified in respect of goods and/or services meant for a wider public. For example, the letters ‘S’, ‘M’ or ‘L’ for clothing would give rise to an objection as these letters are used to describe a particular size of clothing, namely as abbreviations for ‘Small’, ‘Medium’ or ‘Large’. However, if it cannot be established that a given single letter is descriptive for the goods and/or services concerned, and provided that the trade mark applied for is not open to objection under another provision of Article 7(1) EUTMR, then the application should be accepted. See the Guidelines, Part B, Examination, Section 4, Absolute Grounds for Refusal, Chapter 3, Non-Distinctive Trade Marks (Article 7(1)(b) EUTMR), paragraph 5.2 for further examples of where an objection under Article 7(1)(b) EUTMR may be raised. Numerals In its judgment of 10/03/2011,

text: P, 1000, EU:C:2011:139, the Court of Justice ruled that signs composed exclusively of numerals with no graphic modifications may be registered as trade marks (paras 29-30). The Court referred by analogy to its previous judgment of 09/09/2010,

text: P, α, EU:C:2010:508, in respect of single letters (para. 31) and emphasised that trade marks consisting of numerals must be examined with specific reference to the goods and/or services concerned (para. 32). Therefore, a numeral may be registered as a European Union trade mark only if it is distinctive for the goods and services covered by the application for registration (para. 32) and is not merely descriptive or otherwise non-distinctive for those goods and services. For example, the Boards of Appeal confirmed the refusal of the trade marks ‘15’ (12/05/2009, R 72/2009-2, 15) and ‘60’ (23/09/2015, R 553/2015-4, 60) applied for in respect of ‘clothing, footwear, headgear’ in Class 25. The board considered in the first case that that the numeral ‘15’ is linked directly and specifically to these goods, as it contains obvious and direct information regarding their size (paras 15-22). In the second decision, it held that the indication of size 60, whether it exists or might exist, would naturally be understood and connected to measurement (size) by the relevant public (para. 19). The Board also confirmed the refusal of the sign ‘15’ for ‘beers’ in Class 32, as practical experience of the marketing of the relevant goods — relied upon by the Office — showed that a number of very strong beers with an alcohol content of 15 % volume exist on the EU market (12/05/2009, R 72/2009-2, 15, § 15-22). It is well known that numerals are often used to convey relevant information as to the goods and/or services concerned. For example, in the following scenarios an objection would apply on the ground that the sign applied for is descriptive since it refers to: the date of production of goods/provision of services, when this factor is relevant

text: in respect of the goods/services concerned. For instance, 1996 or 2000 for wines

text: would give rise to an objection, since the age of the wine is a very relevant factor when it comes to the purchasing choice; 2020 would give rise to an objection also for events as it could be considered the year of an event; size: in addition to the previous examples 15 and 60 for clothing, 1 600 for cars,

text: 185/65 for tyres, 10 for women’s clothing in the UK, 32 for women’s clothing in France; quantity: 200 for cigarettes;

text: telephone codes: 0800 or 0500 in the UK, 800 in Italy, 902 in Spain, etc.;

text: the time of provision of services: 24/7;

text: the power of goods: 115 for engines or cars;

text: alcoholic content: 4.5 for lager, 13 for wines;

text: the number of pieces: 1 000 for puzzles.

text: However, where the numeral does not appear to have any possible meaning for the goods and services, it is acceptable, that is to say, ‘77’ for financial services or ‘333’ for clothing.

text: 2.9 Names of colours

text: Name of colours can be single colour names (e.g. red, green), compound colour names (e.g. navy blue, blood red) or more unusual colour names. Among unusual colour names, there are names of objects, gemstones, flowers or similar elements (e.g. magnolia, emerald, amethyst, alabaster) and combination of colour associated with another noun (e.g. flamenco red, crystal pink, vintage rose, Bermuda blue). A sign consisting exclusively of the name of a colour must be objected to under Article 7(1)(c) EUTMR when the application claims any goods and services for which

text: the colour constitutes an objective characteristic, inherent to the nature of that product or service and intrinsic and permanent with regard to that product or

text: service (07/05/2019,

text: , vita, EU:T:2019:291, § 44). For the ground of refusal to apply, a direct and specific link is necessary in the mind of the relevant public, not just an indirect association (07/05/2019,

text: , vita, EU:T:2019:291, § 52). In the ‘vita’ case (‘vita’ being the Swedish term for ‘white’), the GC held that the colour white did not constitute an ‘intrinsic characteristic’ which is ‘inherent to the nature’ of goods like food processors, electric pressure cookers and household utensils, but a purely random and incidental aspect which only some of them may have and which does not, in any event, have any direct and immediate link with their nature. Since the relevant goods are available in a multitude of colours, the mere fact that they are more or less usually available in white, among other colours, is irrelevant, since it is not ‘reasonable’ within the meaning of the case-law to believe that for that reason alone the colour white will actually be recognised by the relevant public as a description of an intrinsic characteristic which is inherent to the nature of those goods. As a consequence, the name of the colour BLUE would be objected to in relation to cheese, as it describes a specific kind of cheese. GREEN describes a specific kind of

text: tea or environmentally friendly services, while BROWN in relation to sugar describes the colour and kind of sugar.

text: When the goods for which protection is sought concern colourants such as paint, ink, dyes or cosmetics (e.g. lipsticks or make-up), the name of a colour may describe the actual colour of the goods, and signs consisting exclusively of a colour name should be objected to under Article 7(1)(c) EUTMR, as the names of colours would not be seen as trade marks but merely as indications of the principal characteristic of the goods.

text: Accepted trade marks

text: Rejected trade marks

text: 2.10 Names of banks, newspapers/magazines and airports

text: In some fields, such as banks, newspapers, magazines and airports, consumers are accustomed to recognising descriptive combinations of terms as badges of origin.

text: This is due to the market reality whereby a sign composed of different elements has the capacity to identify a specific entity. It is the case, for example, of a sign that describes an entity that is the only one to offer the respective goods and/or services.

text: The following marks were accepted.

text: Nevertheless, descriptive combinations give rise to an objection when they do not create, at least prima facie, the impression of a clearly identifiable entity. It is the case when the sign refers to a general category and not a specific unique entity.

text: The following marks were refused.

text: 2.11 Names of hotels

text: In the hotel sector, hotel names are often the combination of the word ‘HOTEL’ together with a geographical term (i.e. the name of an island, a city, a country etc.). They usually indicate specific establishments that do not have any link with the geographical term they refer to, since they are not situated in that specific location. Consequently, due to these trade habits, consumers would not perceive expressions such as ‘HOTEL BALI’, ‘HOTEL BENIDORM’ or ‘HOTEL INGLATERRA’ as descriptive indications (describing that the services are provided by a hotel that is situated in that specific location) but rather as badges of origin. Indeed, such expressions are not equivalent to the grammatically correct ones ‘HOTEL IN BALI’, ‘HOTEL DE BENIDORM’ or ‘HOTEL EN INGLATERRA’, which clearly give rise to an objection. This is even truer in cases where the hotel name consists of the names of two different cities, (or of two geographical terms in general), for example ‘HOTEL LONDRES SAN SEBASTIAN’. Indeed, in this case the presence of the wording SAN SEBASTIAN (a city in the north of Spain) clearly indicates that ‘HOTEL LONDRES’ must be regarded as a fanciful expression. Therefore, no objection should be raised. Nevertheless, in those cases where the geographical term precedes the word ‘HOTEL’, the situation may change according to the different languages. For example, in English the wording ‘BALI HOTEL’, would be perceived as an expression merely indicating any hotel located in the island of Bali, which clearly gives rise to an objection. Consequently, each case should be assessed on its own merits. Finally, descriptive combinations such as ‘LEADING HOTELS’ give rise to an objection since they do not create, at least prima facie, the impression of a clearly identifiable entity.

text: 2.12 Combinations of names of countries/cities with a number indicating a year

text: Marks consisting of the combination of the name of a country/city with a number indicating a year must be refused under Article 7(1)(b) and (c) EUTMR in the following cases. Firstly, where the combination is perceived by the relevant consumers as describing an event happening that specific year in the designated geographic location, it must be refused for all the goods and services for which protection is sought, since it is considered that the descriptive link applies to any good or service. As an example, the mark ‘GERMANY 2006’ was found to be immediately perceived as a reference to an event that would take place in 2006. It has been considered as a descriptive indication for a wide list of goods and services, ranging from unexposed films in Class 1 to vehicle maintenance in Class 37. In particular, the decision of 30/06/2008 in case R 1467/2005-1 stated that this mark: is descriptive of the kind and content of those services ‘of actually preparing,

text: organising and promoting an event in Germany in 2006’ (para. 29, referring to the organisation of sporting events related to or associated with football championships, etc.); is descriptive of ‘the purpose and thereby in part the level of quality of goods or

text: services, during such competitions in Germany in the year 2006, as being suitable for competitions of the highest standard or that it has been successfully used in the context of such competitions’ (para. 30, referring to medical instruments, soccer balls, etc.); qualifies the goods as souvenir articles (para. 31, referring to goods such as

text: stickers, confetti, pyjamas, etc.). With regard to souvenir articles, the Board underlined that ‘merchandising and co-branding is not limited to ‘classic’ souvenir products. It is public knowledge that there is a tendency to try to find new markets by combining various goods with the brand of some other unrelated popular event or names’ (30/06/2008, R 1467/2005-1, GERMANY 2006, § 34, referring to goods such as eyeglasses, televisions, toilet paper, etc., all related to or associated with football championships). In line with the above, the Boards confirmed the refusal of the trade mark ‘TARRAGONA 2017’ for various commemorative articles, such as goods in Class 6 (bronzes (works of art), busts of common metal, crates of metal, bells, placards of metal, etc.) or goods in Class 14 (jewellery ornaments, decorative pins of precious metal, amulets (jewellery), rings (jewellery), bracelets and wrist bands, etc.) (28/10/2016, R 2318/2015-5, TARRAGONA 2017, § 32). Secondly, where the combination is not, or not any more, perceived by the relevant consumers as describing an event that happens, or took place, in that specific year in the designated geographic location, a sign combining the name of a country or city with a number indicating a year might still be perceived by the relevant public as an indication of another characteristic, such as the place and time of production or

text: destination. The assessment has to be made in accordance with the criteria explained under paragraph 2.6 above.

text: 2.13 INN codes

text: International non-proprietary names (INNs) are assigned to pharmaceutical substances by the World Health Organisation (WHO), so that each substance can be recognised by a unique name. These names are needed for the clear identification, safe prescription and dispensing of medicines, and for communication and exchange of information among health professionals. INNs can be used freely because they are in the public domain. Examples of INNs are alfacalcido, calcifediol, calcipotriol. Stems define the pharmacologically related group to which the INN belongs. INN stems serve to indicate the mode of action of groups of drugs. These stems and their definitions have been selected by WHO experts and are used when selecting new international non-proprietary names. An example of a stem is ‘calci’. The criteria for assessing the descriptiveness of a trade mark for pharmaceuticals are no different from those applicable to other categories of trade marks. The provisions of trade mark law apply to pharmaceuticals in the same way as to other categories of goods. The European Medicines Agency (EMA) assesses the single name under which a medicinal product will be marketed as part of its marketing authorisation for the European Union. The EMA’s assessment is based on public health concerns and takes into account the WHO World Health Assembly resolution (WHA46.19) on protection of INNs/INN stems to prevent any potential risk of confusion. The Office’s assessment of the registrability of pharmaceutical trade marks, however, has no specific legal basis for taking such health-related concerns into consideration (by analogy, 05/04/2006,

text: , Echinaid, EU:T:2006:106, § 31-32). Considering the descriptive nature of INN codes and stems, an objection should be raised for Class 5 in the following scenarios: where the EUTM is an INN or a stem (the general rules on misspellings also apply,

text: see paragraph 2.3 above); or where an INN or a stem appears within an EUTM and the other elements of the

text: EUTM are descriptive/non-distinctive too (for instance BIO, PHARMA, CARDIO, MED, DERMA). A list of INN codes can be accessed after online registration on MedNet. A list of common stems is available at the following link: INN Stem Book 2018 (who.int) . Office practice is to accept figurative trade marks containing INN codes or stems, applying the same criteria as to any other figurative trade mark containing descriptive word elements (i.e. whether the stylisation and/or the graphical features of a sign are sufficient for it to act as a trade mark). An objection may also be based on Article 7(1)(g) EUTMR in the unlikely scenario that the list of goods in Class 5 refers to a different kind of drug from that covered by the

text: 3 Figurative Marks

text: By definition (Article 3(3)(b) EUTMIR), marks where non-standard characters, stylisation or layout, or a graphic feature or a colour is used are figurative marks. Signs represented in alphabets other than Latin, Greek or Cyrillic are to be considered figurative trade marks. However, this does not mean that the semantic content of these signs will not be taken into consideration for the purpose of the application of Article 7(1)(c) EUTMR. Where a figurative mark consists exclusively of a basic natural form that is not significantly different from a true-to-life portrayal that serves to indicate the kind, intended purpose or other characteristic of the goods or services, it should be objected to under Article 7(1)(c) EUTMR as descriptive of a characteristic of the goods or services in question.

text: In these cases, the Court held that for goods in Classes 18 and 31, the depiction of a dog or horse, respectively, serves to indicate the type of animal for which the goods are intended. In the first case, the Court noted that the goods in Class 18 were specially produced for dogs, such as dog leads, dog collars and other dog accessories including bags. In the field of animal accessories, it is common practice for true-to-life or stylised but realistic portrayals of animals to be used for indicating the type of animal concerned. Therefore, for the goods in Class 18, the relevant public will immediately perceive the image’s message that those goods are for dogs, without any further mental steps. The portrayal of a dog, therefore, indicates an essential characteristic of the goods concerned. The sign applied for is, therefore, descriptive (paras 25-28). The same applies to goods in Class 31. As foodstuffs for domestic animals include dog food, the mark applied for is a descriptive indication for the goods at issue that will be immediately understood by the relevant public (para. 29).

text: In the second case, the Court held that for clothing, headgear and belts in Class 25, the portrayal of a horse was descriptive of the kind or intended purpose of the goods, namely that they are particularly developed or suitable for horse riding. As the relevant public would make a direct link between a horse and horse riding, the Court maintained that there was an immediate and concrete link between the portrayal of a horse and the goods concerned (paras 35-38).

text: The Court noted that the image in question represents in a fairly realistic way the silhouette of a bodybuilder in a typical pose that highlights the body’s muscles and, in particular, those of the arms. No detail or characteristic of that image goes beyond the standard representation of a bodybuilder. The mark applied for shows a sufficiently direct and specific relationship to the goods and services covered by the application for registration, enabling the relevant public to perceive immediately the nature and intended purpose of those goods and services. By way of example, the sign below was held to be sufficiently highly stylised to significantly differ from a true-to-life portrayal serving to indicate the kind or intended purpose of the goods or services, and, thus, was registered.

text: 4 Figurative Threshold

text: 4.1 Preliminary remarks

text: Terms or signs that are non-distinctive, descriptive or generic may be brought out of the scope of a refusal based on Article 7(1)(b), (c) or (d) EUTMR if combined with other elements that make the sign as a whole distinctive. In other words, refusals based on Article 7(1)(b), (c) and/or (d) EUTMR may not apply to signs consisting of a non-distinctive, descriptive or generic element combined with other elements that take the sign as a whole beyond a minimum level of distinctiveness. In practice this means that one of the main questions that the Office must answer is whether the mark is figurative enough to reach the minimum degree of distinctive character that is required for registration. Finally, the fact that a sign contains figurative elements does not prevent it from still being misleading or contrary to public order or accepted principles of morality or from falling under other grounds of refusal, such as those set forth by Article 7(1)(h), (i), (j) (k), (l) and (m) EUTMR.

text: 4.2 Assessment of the figurative threshold

text: The presence of figurative elements may give distinctive character to a sign consisting of a descriptive and/or non-distinctive word element so as to render it eligible for registration as an EUTM. Therefore, the question to be considered is whether the stylisation and/or the graphical features of a sign are sufficiently distinctive for the sign to act as a badge of origin. In the framework of the European Union Intellectual Property Network (EUIPN), the Office and a number of trade mark offices in the European Union have agreed on a Common Practice in relation to when a figurative mark, containing purely descriptive/non-distinctive words, should pass the absolute grounds examination because the figurative element renders sufficient distinctive character (also referred to as Convergence Project 3 or CP3 Practice) ( ). The Common Practice establishes criteria to determine if the threshold of distinctiveness is met due to the figurative features in the mark. They consider: word elements such as typeface and font, combination with colour, punctuation

text: marks and/or other symbols, or how the words are placed (sideways, upside-down, etc.); figurative elements such as the use of simple geometric shapes, the position and

text: proportion (size) of the figurative element(s) in relation to the word elements, or whether the figurative element is a representation of, or has direct link with, the goods and/or services, and whether the figurative element is commonly used in trade for the goods and/or services applied for; both word and figurative elements and how combinations of the criteria affect

text: distinctiveness. These criteria are explained in the following paragraphs.

text: Moreover, the Common Practice includes a number of examples. Some of them are included in the paragraphs below (marked as ‘CP3 example(s)’). The signs containing ‘Flavour and aroma’ seek protection for coffee in Class 30, the signs containing ‘Fresh sardine’ and ‘Sardines’ seek protection for sardines in Class 29, the sign containing ‘DIY’ seeks protection for kits of parts for assembly into furniture in Class 20, the signs containing ‘Pest control services’ seek protection for pest control services in Class 37, and the sign containing ‘Legal advice services’ seeks protection for legal services in Class 45. In addition to the CP3 examples agreed by the Office and a number of trade mark offices in the European Union, the following paragraphs also include examples of EUTMs examined by the Office. In the decision of 09/11/2018, R 1801/2017‑G, easyBank (fig.), the Grand Board not only confirmed the assessment made in the mark at stake (see below) but also the assessment in previous decisions (15 in total) regarding the impact of figurative elements on descriptive word elements (paras 71-72). Some of those cases can be found under the corresponding section.

text: 4.2.1 Word elements in a mark

text: Typeface and font In general, descriptive/non-distinctive word elements appearing in basic/standard typeface, lettering or handwritten style typefaces — with or without font effects (bold, italics) — are not registrable.

text: Non-distinctive examples

text: Where standard typefaces incorporate elements of graphic design as part of the lettering, those elements need to have sufficient impact on the mark as a whole to render it distinctive. When these elements are sufficient to distract the attention of the consumer from the descriptive meaning of the word element or likely to create a lasting impression of the mark, the mark is registrable.

text: Distinctive examples

text: Combination with colour

text: The mere ‘addition’ of a single colour to a descriptive/non-distinctive word element, either to the letters themselves or as a background, will not be sufficient to give the mark distinctive character.

text: Use of colours is common in trade and would not be seen as a badge of origin. However, it cannot be excluded that a particular arrangement of colours that is

text: unusual and can be easily remembered by the relevant consumer could render a mark distinctive.

text: Non-distinctive examples

text: Combination with punctuation marks and other symbols

text: In general, the addition of punctuation marks or other symbols commonly used in trade does not add distinctive character to a sign consisting of descriptive/non-distinctive word elements.

text: Non-distinctive examples

text: Position of the word elements (sideways, upside-down, etc.)

text: In general, the fact that the word elements are arranged vertically, upside-down or in one or more lines is not sufficient to endow the sign with the minimum degree of distinctive character that is necessary for registration.

text: Non-distinctive examples

text: However, the way in which the word elements are positioned can add distinctive character to a sign when the arrangement is of such a nature that the average consumer focuses on it rather than immediately perceiving the descriptive message.

text: Distinctive examples

text: 4.2.2 Figurative elements (word element(s) and additional figurative element(s))

text: Use of simple geometric shapes

text: Descriptive or non-distinctive verbal elements combined with simple geometric shapes such as points, lines, line segments, circles, triangles, squares, rectangles,

text: Non-distinctive examples

text: However, geometric shapes can add distinctiveness to a sign when their presentation, configuration or combination with other elements creates a global impression that is sufficiently distinctive.

text: Distinctive examples

text: Position and proportion (size) of the figurative element in relation to the word element In general, when a figurative element that is distinctive on its own is added to a descriptive and/or non-distinctive word element, then the mark is registrable, provided that said figurative element is, due to its size and position, clearly recognisable in the sign.

text: Non-distinctive examples

text: Distinctive examples

text: The figurative element is a representation of, or has a direct link with, the goods and/or services

text: A figurative element is considered to be descriptive and/or devoid of distinctive character whenever:

text: it is a true-to-life portrayal of the goods and services;

text: it is a symbolic/stylised –– portrayal of the goods and services that does not depart significantly from the common representation of said goods and services.

text: Non-distinctive examples

text: Distinctive examples

text: A figurative element that does not represent the goods and services but has a direct link with the characteristics of the goods and services will not render the sign distinctive, unless it is sufficiently stylised.

text: Non-distinctive examples

text: Distinctive examples

text: The figurative element is commonly used in trade in relation to the goods and/or services applied for

text: In general, figurative elements that are commonly used or customary in trade in relation to the goods and/or services claimed do not add distinctive character to the mark as a whole.

text: Non-distinctive examples

text: 4.2.3 Word and figurative elements (stylised word elements and additional figurative element(s))

text: In general, a combination of figurative and word elements, which if considered individually are devoid of distinctive character, does not give rise to a distinctive mark.

text: Nevertheless, a combination of such elements when considered as a whole could be perceived as a badge of origin due to the presentation and composition of the sign. This will be the case when the combination results in an overall impression that is sufficiently far removed from the descriptive/non-distinctive message conveyed by the word element. Examples. In order for a sign to be registrable, it must have a minimum level of distinctiveness. The purpose of the scale is to illustrate where that threshold is. The examples below from left to right contain elements with an increasing impact on the distinctiveness of the marks, resulting in marks that are either non-distinctive in their totality (red column) or distinctive in their totality (green column).

text: Non-distinctive examples

text: Distinctive examples

text: 5 Descriptiveness in the context of CP11 (sound marks, motion marks, multimedia marks and hologram marks)

text: In the framework of the European Union Intellectual Property Network, the trade mark offices of the European Union have agreed on a Common Communication on New Types of Marks: Examination of Formal Requirements and Grounds for Refusal (CP11). They agreed on examples of sound marks, motion marks, multimedia marks and hologram marks that are considered descriptive/non-distinctive for the corresponding goods and/or services. Some examples are reproduced below and further examples can be found in the CP11. In the same way that the general criteria for assessing distinctiveness of a traditional trade mark are applicable to new types of trade mark, the established principles to assess the descriptiveness of traditional marks or components thereof must be applied when assessing the descriptiveness of the verbal and/or figurative elements contained in a new type of trade mark.

text: 5.1 Sound marks

text: In general, if a link between the sound(s) perceived in the mark and the goods and services applied for or their characteristics can be easily established, the sound mark will be considered descriptive. To the contrary, in general, when it is clear that there is no link between the sound perceived in the mark and the goods and/or services or their characteristics, the sound mark will not be considered descriptive.

text: 5.2 Motion marks

text: In general, when the element(s) in the motion mark show(s) a realistic depiction of the goods and/or services applied for, or a related process, or if a link to the goods and/or services applied for or their characteristics can be easily established, the motion mark will be considered descriptive. This is especially so when the element(s) in motion do(es) not differ from a true-to-life portrayal of the representation of those goods and/or services. However, in general, when the elements in the motion mark show an unconventional depiction of the goods and/or services applied for, or a related process differing significantly from a true-to-life portrayal of the representation of those goods and/or services, or no link with the goods and/or services can be easily established, the motion mark will not be considered descriptive.

text: 5.3 Multimedia marks

text: In general, when the image and sound elements of the multimedia mark, show a realistic depiction of the goods and/or services applied for, or a related process, or if a link to the goods and/or services aimed for protection or their characteristics can be easily established, the multimedia mark will be considered descriptive. This is especially so when the elements in the multimedia mark do not differ from a true-to-life portrayal of the representation of those goods and/or services. Notwithstanding the above, in general, when the subject matter of the image(s) and sound(s) of the multimedia mark show an unconventional depiction of the goods and/or

text: services applied for, or a related process, or if no link with the goods and/or services aimed for protection or their characteristics can be easily established, the multimedia mark will not be considered descriptive.

text: 5.4 Hologram marks

text: In general, when the elements in the hologram mark show a realistic depiction of the goods and/or services applied for, or if a link to the goods and/or services applied for or their characteristics can be easily established, the hologram mark will be considered descriptive. This is especially so when the elements with holographic characteristics do not differ from a true-to-life portrayal of the representation of those goods and/or services. Nevertheless, in general, when elements in the hologram mark show an unconventional depiction of the goods and/or services applied for, which differs significantly from a true-to-life portrayal of those goods and/or services, or have no connection with the goods and/or services, the hologram mark will not be considered descriptive.

text: Part B Examination Section 4 Absolute grounds for refusal Chapter 5

text: Table of Contents 1 General Remarks

text: Article 7(1)(d) EUTMR excludes from registration signs that consist exclusively of words or indications that have become customary in the current language or in the bona fide and established practices of the trade at the relevant point in time (see paragraph 2 below). In this context, the customary nature of the sign usually refers to something other than the properties or characteristics of the goods or services themselves. Although there is a clear overlap between the scope of Article 7(1)(d) and Article 7(1) (c) EUTMR, signs covered by Article 7(1)(d) EUTMR are excluded from registration not because they are descriptive, but on the basis of their current usage in trade sectors covering the goods or services for which the mark is applied for (04/10/2001,

text: , Bravo, EU:C:2001:510, § 35). Moreover, signs or indications that have become customary in the current language or in the bona fide and established practices of the trade to designate the goods or services covered by that sign are not capable of distinguishing the goods or services of one undertaking from those of other undertakings and do not, therefore, fulfil the essential function of a trade mark (16/03/2006,

text: , Weisse Seiten, EU:T:2006:87, § 52). This ground for refusal also covers words that originally had no meaning or had another meaning, for example, ‘weiße Seiten’ (= ‘white pages’). It also covers certain abbreviations that have entered informal or jargon usage and have thereby become customary in trade. Furthermore, a refusal based on Article 7(1)(d) EUTMR also covers figurative elements that are either frequently used pictograms or similar indications or have even become the standard designation for goods and services for which registration is sought, for example a white ‘P’ on a blue background for parking places, the Aesculapian staff for pharmacies, or the silhouette of a knife and fork for restaurant services.

text: 2 Point in Time of a Term Becoming Customary

text: The customary character must be assessed with reference to the filing date of the EUTM application (05/03/2003,

text: , BSS, EU:T:2003:54, § 46; 05/10/2004,

text: P, BSS, EU:C:2004:587, § 39-40). Whether a term or figurative element was non-descriptive or distinctive long before that date, or when the term was first adopted, will in most cases be immaterial, since it does not necessarily prove that the sign in question had not become customary by the filing date (05/03/2003,

text: , BSS, EU:T:2003:54, § 47; similarly, 21/05/2014,

text: , BATEAUX MOUCHES, EU:T:2014:264).

text: In some cases, a sign applied for may become customary after the filing date. Changes in the meaning of a sign that lead to a sign becoming customary after the filing date do not lead to a declaration for invalidity ex tunc under Article 59(1) (a) EUTMR, but can lead to a revocation with effect ex nunc under Article 58(1) (b) EUTMR. For example, the EUTM registration ‘STIMULATION’ was cancelled on the grounds that it had become a term customarily used for energy drinks. For further information, see the Guidelines, Part D, Cancellation, Section 2, Substantive Provisions.

text: 3 Assessment of Customary Terms

text: Whether a mark is customary must be assessed, firstly, by reference to the goods or services for which registration is sought, and, secondly, on the basis of the target public’s perception of the mark (07/06/2011,

text: , 16PF, EU:T:2011:253, § 53). As regards the link with the goods and services for which registration is sought, Article 7(1)(d) EUTMR will not apply where the mark is a more general laudatory term that has no particular customary link with the goods and services concerned (04/10/2001,

text: , Bravo, EU:C:2001:510, § 27, 31). As regards the relevant public, the customary character must be assessed by taking account of the expectations that the average consumer, who is deemed to be reasonably well informed and reasonably observant and circumspect, is presumed to have in respect of the type of goods in question (16/03/2006,

text: , Weisse Seiten, EU:T:2006:87, § 50). The Court has clarified a number of issues in this respect. The relevant public to be taken into account in determining the sign’s customary

text: character comprises not only all consumers and end users but also, depending on the features of the market concerned, all those in the trade who deal with that product commercially (29/04/2004,

text: , Bostongurka, EU:C:2004:275, § 26; 06/03/2014,

text: , Kornspitz, EU:C:2014:130, § 27). Where the trade mark targets both professionals and non-professionals (such as

text: intermediaries and end users), it is sufficient for a sign to be refused or revoked if it is perceived to be a usual designation by any one sector of the relevant public, notwithstanding that another sector may recognise the sign as a badge of origin (06/03/2014,

text: , Kornspitz, EU:C:2014:130, § 23-26). The General Court has held that Article 7(1)(d) EUTMR is not applicable when the

text: sign’s use in the market is by one sole trader (other than the EUTM applicant) (07/06/2011,

text: , 16PF, EU:T:2011:253). In other words, a mark will not be regarded as customary purely for the simple reason that a competitor of the EUTM applicant also uses the sign in question. For customary character to be demonstrated, it is necessary for the examiner to provide evidence (which will generally come from the internet) that the relevant consumer has been exposed to the mark in a non-trade mark context and that, as a result, they recognise its customary significance vis-à-vis the goods and services for which the trade mark is filed.

text: Part B Examination Section 4 Absolute grounds for refusal Chapter 6 Shapes or other characteristics that result from the nature of the goods, are necessary to obtain a

text: Table of Contents

text: 2 Shape or Other Characteristics Resulting from the Nature of the Goods..565 3 Shape or Other Characteristics of Goods Necessary to Obtain a

text: 1 General Remarks

text: Article 7(1)(e) EUTMR excludes from registration signs that consist exclusively of (i) the shape or another characteristic that results from the nature of the goods themselves; (ii) the shape or another characteristic of goods that is necessary to obtain a technical result; or (iii) the shape or another characteristic of the goods that gives substantial value to the goods. The wording of this provision implies, in principle, that it does not apply to signs for which registration is sought in respect of services. In relation to shapes, the objective pursued by Article 7(1)(e) EUTMR is the same for all of its three grounds, namely to prevent the exclusive and permanent rights that a trade mark confers from serving to extend the life of other IP rights indefinitely, such as patents or designs, which the EU legislature has sought to make subject to limited periods (18/09/2014,

text: , Tripp Trapp, EU:C:2014:2233, § 19-20; 14/09/2010,

text: P, Lego brick, EU:C:2010:516, § 43; 06/10/2011,

text: , Loudspeaker, EU:T:2011:575, § 65). Article 7(1)(e) EUTMR does not define the category of mark that is considered a shape within the meaning of that provision. It makes no distinction between 2D and 3D shapes, and 2D representations of 3D shapes. Therefore, Article 7(1)(e) EUTMR is applicable not only to 3D shapes but also to other categories of marks, such as figurative signs representing shapes (06/03/2014,

text: P –

text: P, Surface covered with circles, EU:C:2014:129, § 55).

text: Regulation (EU) 2015/2424

text: of the European Parliament and of the Council amending the Community Trade Mark Regulation introduced the reference to ‘another characteristic’ of goods. The CJEU has not yet ruled on how these words are to be interpreted. In the framework of the European Union Intellectual Property Network, the trade mark offices of the European Union have agreed on a Common Communication on New Types of Marks: Examination of Formal Requirements and Grounds for Refusal (CP11). They agreed on examples of sound marks, motion marks and multimedia marks that are considered not objectionable/objectionable as they consist of characteristics that result from the nature of the goods, are necessary to obtain a technical result or give substantial value to the goods. Some examples are reproduced below and further examples can be found in the CP11. Importantly, unlike the situation covered by

text: Article 7(1)

text: (b) EUTMR, the average consumer’s perception is not a decisive element when applying the ground for refusal under

text: Article 7(1)

text: (e) EUTMR but, at most, may be a relevant criterion for the Office when identifying the sign’s essential characteristics (18/09/2014,

text: , Tripp Trapp, EU:C:2014:2233, § 34). For these reasons, an objection under

text: Article 7(1)

text: (e) EUTMR to marks consisting of shapes or other characteristics that follow from the nature of the goods; shapes or other characteristics that are necessary to obtain a technical result; or shapes

text: or other characteristics giving substantial value to the goods cannot be overcome by demonstrating that they have acquired distinctive character. In other words,

text: Article 7(3)

text: EUTMR is not applicable to such shapes or other characteristics, regardless of whether that particular shape or another characteristic might actually be distinctive in the marketplace. It is therefore essential to undertake a prior examination of the sign under

text: provided for in

text: Article 7(1)

text: EUTMR may apply (06/10/2011,

text: , Loudspeaker, EU:T:2011:575, § 44). For the sake of sound administration and economy of proceedings, the Office will raise any objections to registration of the sign under

text: Article 7(1)

text: EUTMR simultaneously in one communication. The reasoning of the objection will address first

text: Article 7(1)

text: (e) EUTMR, even if this ground for refusal may be less evident than, for instance, an objection for a lack of distinctiveness under

text: Article 7(1)

text: (b) EUTMR. This is justified by the fact that registration of a sign that falls foul of

text: Article 7(1)

text: (e) EUTMR is clearly impossible even if acquired distinctiveness through use has been proven. It may also be the case that, following an initial objection under

text: Article 7(1)

text: (b) and/or (c) EUTMR, the evidence submitted by the applicant shows that the sign consists exclusively of a shape or another characteristic as listed in

text: Article 7(1)

text: (e) EUTMR. In these cases, an objection under

text: Article 7(1)

text: (e) EUTMR should be raised as well. A sign consists ‘exclusively’ of the shape of goods or other characteristics when all its essential characteristics — that is to say, its most important elements — result from the nature of the goods (

text: Article 7(1)

text: (e)(i) EUTMR), perform a technical function (

text: Article 7(1)

text: (e)(ii) EUTMR) or give substantial value to the goods (

text: Article 7(1)

text: (e)(iii) EUTMR). The presence of one or more minor arbitrary elements, therefore, will not alter the conclusion (18/09/2014,

text: , Tripp Trapp, EU:C:2014:2233, § 21-22; 14/09/2010,

text: P, Lego brick, EU:C:2010:516, § 51-52). However, an objection under

text: Article 7(1)

text: (e) EUTMR would not be justified if the sign applied for were a shape or other characteristic(s) combined with additional, distinctive matter such as word or figurative elements (that qualify as essential characteristics of the sign), as the sign in its entirety would then not consist exclusively of a shape or other characteristic(s) (see Step 3 in the Guidelines, Part B, Examination, Section 4, Absolute Grounds for Refusal, Chapter 3, Non-Distinctive Trade Marks (

text: Article 7(1)

text: (b) EUTMR), paragraph 10.3). The correct application of

text: Article 7(1)

text: (e) EUTMR requires that the essential characteristics of the sign at issue be properly identified. There is no hierarchy that applies systematically between the various types of elements of which a sign may consist. Moreover, in determining the essential characteristics of a sign, the Office may either base its assessment directly on the overall impression produced by the sign, or first examine in turn each of the components of the sign concerned (14/09/2010,

text: P, Lego brick, EU:C:2010:516, § 70; 19/09/2012,

text: , Knife handles, EU:T:2012:443, § 37).

text: This identification may, depending on the case and in particular its degree of difficulty, ‘be carried out by means of a simple visual analysis of the sign or, alternatively, be based on a detailed examination in which relevant assessment criteria may be taken into account, such as surveys or expert opinions, or data relating to intellectual property rights conferred previously for the goods concerned’, such as patents (14/09/2010,

text: P, Lego brick, EU:C:2010:516, § 71, 85). Once the sign’s essential characteristics have been identified, it will have to be established whether they all fall under the respective ground set out in

text: Article 7(1)

text: (e) EUTMR (14/09/2010,

text: P, Lego brick, EU:C:2010:516, § 72). In this respect, each of the three grounds must be applied independently of the others. In addition, where none of those grounds is fully applicable for the entire shape or another characteristic, they do not preclude registration of the sign (18/09/2014,

text: , Tripp Trapp, EU:C:2014:2233, § 39, 42). Therefore, if parts of the shape or other characteristics are necessary to obtain a technical result within the meaning of

text: Article 7(1)

text: (e)(ii) EUTMR, for instance, and the remaining parts merely give substantial value to the goods under

text: Article 7(1)

text: (e)(iii) EUTMR, neither of these two provisions bars the registration of the shape or other characteristics as a sign.

text: 2 Shape or Other Characteristics Resulting from the Nature of the Goods

text: Under

text: Article 7(1)

text: (e)(i) EUTMR, signs that consist exclusively of the shape or another characteristic that results from the nature of the goods themselves cannot be registered. This ground for refusal will apply when the sign, whether 2D or 3D, consists exclusively of the only natural shape of the good, that is, ‘natural’ products that have no substitute: for example, the realistic representation below of a banana for bananas.

text: The same would apply to ‘regulated’ products (the shape or another characteristic of which is prescribed by legal standards), such as a rugby ball. Apart from ‘natural’ and ‘regulated’ products, all shapes that are inherent to the generic function or functions of such goods must, in principle, also be denied registration (18/09/2014,

text: ,Tripp Trapp, EU:C:2014:2233, § 23-25). The Court of Justice has not given any further guidance about exactly when a shape is inherent to the generic function(s) of goods. In the absence of any case-law in this respect, the examples given by the Advocate General may be referred to: legs with a horizontal level for a table; an orthopaedic-shaped sole with a V-shaped strap for flip-flops (18/09/2014,

text: , Tripp Trapp, EU:C:2014:322, § 59). Even though the opinion of the Advocate General is not binding, it can give useful guidance.

text: There is no practice yet on cases where a trade mark consists of ‘other characteristics’ that result from the nature of the goods. As an invented example, a sound mark representing the sound of a motorbike for motorbikes could be captured by

text: Article 7(1)

text: (e)(i) EUTMR if the sound results from the nature of the goods (in the sense of its technical performance). Another hypothetical example of a sign that consists exclusively of ‘other characteristics’ resulting from the nature of the goods could be an olfactory mark of a scent for a perfume. CP11 provides some examples of ‘new types of marks’ that would be rejected because the sign results from the nature of the goods applied for:

text: 3 Shape or Other Characteristics of Goods Necessary to Obtain a Technical Result

text: Article 7(1)

text: (e)(ii) EUTMR excludes from registration signs that consist exclusively of the shape or another characteristic of goods that is necessary to obtain a technical result. Its aim is to prevent an undertaking from obtaining a monopoly on technical solutions or functional solutions of a product (14/09/2010,

text: P, Lego brick, EU:C:2010:516, § 43). The CJEU has not yet ruled on how to interpret ‘another characteristic’ of the goods. Other characteristics of goods that are necessary for obtaining a technical result may include particular sounds. For instance, as an invented example, a sound mark for insect repellents may be objected to under

text: Article 7(1)

text: (e)(ii) EUTMR if the sound does indeed repel insects.

text: Common Communication on New Types of Marks: Examination of Formal Requirements and Grounds for Refusal (CP11) provides some examples of sound/ motion marks that consist exclusively of the sound/motion that is necessary to obtain a technical result:

text: A sign consists ‘exclusively’ of the shape of goods (or other characteristics) that is necessary to obtain a technical result when all the essential characteristics of a shape (or other characteristics) perform a technical function. First, the essential characteristics of the shape [or other characteristics] must be identified; then they must be assessed to see whether they are all necessary for obtaining a technical result. 1. Identification of the essential characteristics of a sign The essential characteristics of the sign at issue must be properly identified (06/03/2014,

text: P –

text: P, Surface covered with circles, EU:C:2014:129, § 46 and the case-law cited therein). The expression ‘essential characteristics’ must be understood as referring to the most important elements of the sign (14/09/2010,

text: P, Lego brick, EU:C:2010:516, § 68-69). Identification of the essential characteristics of a sign is carried out on a case-bycase basis, with no hierarchy between the various types of elements of which a sign may consist. It can be based directly on the overall impression produced by the sign

text: or by examining in turn each of the components of the sign concerned (14/09/2010,

text: P, Lego brick, EU:C:2010:516, § 70 and the case-law cited therein). Identification may be by simple visual analysis of the sign or by a detailed examination in which relevant assessment criteria are applied, such as surveys, expert opinions, or data relating to intellectual property rights previously conferred in respect of the goods concerned. Information other than that relating to the graphic representation alone, such as the perception of the relevant public, may be used in order to identify the essential characteristics of the sign at issue (23/04/2020,

text: , Gömböc Kutató, EU:C:2020:296, § 37). For futher details regarding the consumer's perception in relation to sound, motion and multimedia marks that might be relevant under this ground, please see the CP11. For the purposes of

text: Article 7(1)

text: (e)(ii) EUTMR, it is irrelevant whether the ‘essential characteristics’ or ‘most important elements’ of the sign are distinctive or not (24/09/2019,

text: , DEVICE OF A BLACK SQUARE CONTAINING SEVEN CONCENTRIC BLUE CIRCLES (fig.), EU:T:2019:674, § 51). The presence of non-essential characteristics with no technical function is also irrelevant under

text: Article 7(1)

text: (e)(ii) EUTMR (14/09/2010,

text: P, Lego brick, EU:C:2010:516, § 51). 2. Are all the essential characteristics necessary for obtaining a technical result? For this ground of refusal to apply, the essential characteristics of the sign at issue must all be technically necessary for obtaining the intended technical result of the goods concerned.

text: Article 7(1)

text: (e)(ii) EUTMR does not apply where there is a decorative or imaginative element or a distinctive word component that is an essential characteristic of the sign but is not necessary for obtaining a technical result. This ground applies even if the essential characteristics represented in the sign are not sufficient in themselves to achieve the technical result, but merely contribute to it (24/10/2019,

text: , Cubes (3D), EU:T:2019:765, § 94). The representation does not have to reveal all the elements that are necessary for the implementation of the technical solution concerned, provided it is shown that the implementation of that technical solution cannot be effective without the essential characteristics that are visible in the graphic representation (24/10/2019,

text: , Cubes (3D), EU:T:2019:765, § 96). The essential characteristics of the shape or of another characteristic of the goods necessary to obtain a technical result must, wherever possible, be assessed in the light of the technical function of the actual goods represented. Such analysis cannot be made without taking into consideration, where appropriate, any additional elements relating to the function of the actual goods, even if they are not visible in the representation. For example, in a case relating to a ‘Rubik’s Cube’type puzzle, the Court of Justice found that the functionality of the grid structure should have been examined in the light of the rotating capability of the individual

text: elements of the puzzle (10/11/2016,

text: P, CUBES (3D), EU:C:2016:849, § 47-51). Therefore, when examining the functional characteristics of a sign, the competent authority may carry out a detailed examination that takes into account material relevant for appropriately identifying the essential characteristics of a sign, in addition to the representation and any descriptions filed at the time of the application for registration (24/10/2019,

text: , Cubes (3D), EU:T:2019:765, § 87 and case-law quoted). This material may consist, for example, of a product catalogue or advertising material (24/09/2019,

text: , DEVICE OF A BLACK SQUARE CONTAINING SEVEN CONCENTRIC BLUE CIRCLES (fig.), EU:T:2019:674). Information which is not apparent from the graphic representation must originate from objective and reliable sources and may not include the perception of the relevant public (23/04/2020,

text: , Gömböc Kutató, EU:C:2020:296, § 37). The fact that, for example, the shape concerned is, or has been, the subject of a claim in a registered patent or a patent application constitutes prima facie evidence that the aspects of the shape identified in the patent claim as functional are necessary for achieving a technical result (this approach has been followed by the Boards of Appeal, for example in their decision of 17/10/2013, R 42/2013‑1, FORM EINES STÖPSELS (3D MARKE)). The fact that there may be alternative shapes, with other dimensions or another design, capable of achieving the same technical result does not in itself mean that this provision does not apply (14/09/2010,

text: P, Lego brick, EU:C:2010:516, § 53-58). The same reasoning is applicable by analogy regarding the other characteristics of the goods in the sense of

text: Article 7(1)

text: (e)(ii). Likewise, the combination of different elements that are all functional in themselves does not make the sign registrable. The functions performed by the essential characteristics of the shape or another characteristic of the goods must beassessed in the light of the actual goods concerned. In assessing an EUTM application against

text: Article 7(1)

text: (e)(ii) EUTMR, consideration should be given to the meaning of the expression ‘technical result’. This expression should be interpreted broadly and includes shapes or other characteristics that, for example: ○ fit with another article; ○ give the most strength; ○ use the least material; ○ facilitate convenient storage or transportation.

text: 4 Shape or Other Characteristics Giving Substantial Value to the Goods

text: Under

text: Article 7(1)

text: (e)(iii) EUTMR, signs that consist exclusively of the shape or another characteristic that gives substantial value to the goods cannot be registered or, if registered, they are liable to be declared invalid.

text: Whereas the same shape or another characteristic can, in principle, be protected both as a design and as a trade mark,

text: Article 7(1)

text: (e)(iii) EUTMR only refuses trade mark protection for shapes or other characteristics in certain specific cases, namely, when the sign consists exclusively of a shape or another characteristic that gives substantial value to the product.

text: The concept of ‘value’ should be interpreted not only in commercial (economic) terms, but also in terms of ‘attractiveness’, that is to say, the likelihood that the goods will be purchased primarily because of their particular shape or another particular characteristic. When other characteristics may give the product significant value in addition to this aesthetic value, such as functional value (for instance safety, comfort and reliability),

text: Article 7(1)

text: (e)(iii) EUTMR cannot be ruled out automatically. Indeed, the concept of ‘value’ cannot be limited purely to the shape or another characteristic of goods having only artistic or ornamental value (18/09/2014,

text: , Tripp Trapp, EU:C:2014:2233, § 29-32).

text: The concept of ‘value’ should not be interpreted as meaning ‘reputation’, since application of this absolute ground for refusal is justified exclusively by the effect on the value added to the goods by the shape or other characteristic and not by other factors, such as the reputation of the word mark that is also used to identify the goods in question (16/01/2013, R 2520/2011-5, SHAPE OF GUITAR BODY (3D), § 19). Furthermore, that the shape or other characteristic may be pleasing or attractive is not sufficient to exclude it from registration. If that were the case, it would be virtually impossible to imagine any trade mark of a shape or another characteristic, given that in modern business there is no product of industrial utility that has not been the subject of study, research and industrial design before its eventual launch on the market (03/05/2000, R 395/1999-3, SINGLE SQUARE CLASP, § 1-2, 22-36). In assessing the value of the goods, account may be taken of criteria such as the nature of the category of goods concerned, the artistic value of the shape or other characteristic in question, its dissimilarity from other shapes in common use on the market concerned, a substantial price difference compared with similar goods, and the development of a promotion strategy that focuses on accentuating the aesthetic characteristics of the product in question (18/09/2014,

text: , Tripp Trapp, EU:C:2014:2233, § 35). The fact that the shape also performs other functions in addition to its aesthetic function (e.g. functional functions) does not exclude the application of

text: Article 7(1)

text: (e)(iii) EUTMR (18/09/2014,

text: , Tripp Trapp, EU:C:2014:2233, § 31). An example of a sign that consists exclusively of ‘other characteristics’ that give substantial value to the goods could be a sound mark, representing a specific sound of a motorbike that may be appealing to a significant part of the relevant public to the extent that it may indeed affect the consumer’s choice of purchase. For the examination of these trade marks, a case-by-case approach is necessary.

text: Article 7(1)

text: (e)(iii) EUTMR applies when it is apparent from objective and reliable evidence that a consumer’s decision to purchase the goods in question is, to a very great extent, determined by one or more features of the shape or another characteristic which alone forms the sign (23/04/2020,

text: , Gömböc Kutató, EU:C:2020:296, §41). It is important to determine whether the aesthetic value of a shape (or, by analogy,

text: other characteristic) can, in its own right, determine the commercial value of the

text: product and the consumer’s choice to a large extent. It is immaterial whether the overall value of the product is also affected by other factors, if the value contributed by the shape or other characteristic itself is substantial. If a shape or other characteristic derives its appeal from the fame of its designers and/or marketing efforts rather than from the aesthetic value of the shape or other characteristic itself,

text: Article 7(1)

text: (e)(iii) EUTMR will not apply (14/12/2010, R 486/2010-2, SHAPE OF A CHAIR (3D), § 20-21). Example of refused trade mark

text: Examples where it was upheld that the shape or other characteristics did not give substantial value to the goods

text: Part B Examination Section 4 Absolute grounds for refusal Chapter 7

text: 1 General remarks

text: Article 7(1)

text: (f) EUTMR excludes from registration trade marks that are contrary to public policy or to accepted principles of morality.

text: Article 7(1)

text: (f) EUTMR mirrors that of

text: Article 6

text: quinquies(B)(3) of the Paris Convention ( ), which provides for the refusal of trade mark applications and for the invalidation of registrations where trade marks are ‘contrary to morality or public order’. The wording of

text: Article 7(1)

text: (f) EUTMR is very broad and allows a great deal of room for interpretation. A judicious application of this provision necessarily entails balancing the right of traders to freely employ words and images in the signs they wish to register as trade marks against the right of the public not to encounter disturbing, abusive, insulting and even threatening trade marks (06/07/2006, R 495/2005-G, SCREW YOU, § 14). The rationale of

text: Article 7(1)

text: (f) EUTMR is not to identify and filter out signs whose use in commerce must at all costs be prevented, but to preclude trade marks from registration where granting a monopoly would contravene the state of law or would be perceived by the relevant public as going directly against the basic moral norms of society. In other words, the Office should not positively assist people who wish to further their business aims by means of trade marks that offend against certain basic values of civilised society (06/07/2006, R 495/2005-G, SCREW YOU, § 13). The application of

text: Article 7(1)

text: (f) EUTMR is not limited by the principle of freedom of expression (

text: Article 10

text: , Freedom of expression, European Convention on Human Rights) since the refusal to register only means that the sign is not granted protection under trade mark law and does not stop the sign from being used — even in business (09/03/2012,

text: , ¡Que buenu ye! HIJOPUTA (fig.), EU:T:2012:120, § 26). ‘Public policy’ and ‘accepted principles of morality’ are two different concepts that often overlap. The question whether the goods or services for which protection is sought can or cannot be legally offered in a particular Member State’s market is irrelevant for the question as to whether the sign itself falls foul of

text: Article 7(1)

text: (f) EUTMR (13/09/2005,

text: , Intertops, EU:T:2005:312, § 33). Whether or not a mark is contrary to public policy or accepted principles of morality must be determined by the intrinsic qualities of the mark applied for, and not by the circumstances relating to the conduct of the person applying for the trade mark (13/09/2005,

text: , Intertops, EU:T:2005:312, § 28). In its judgment of 20/09/2011,

text: , Coat of Arms of the Soviet Union, EU:T:2011:498, the General Court held that the concepts of ‘public policy’ and ‘acceptable principles of morality’ must be interpreted not only with reference to the circumstances common to all Member States but by taking into account ‘the particular circumstances of individual Member States which are likely to influence the perception of the relevant public within those States’ (para. 34).

text: The legislation and administrative practice of certain Member States can also be taken into account in this context (i.e. for assessing subjective values), not because of their normative value, but as evidence of facts that make it possible to assess the perception of the relevant public in those Member States (20/09/2011,

text: , Coat of Arms of the Soviet Union, EU:T:2011:498, § 57). In such a case, the illegality of the EUTM applied for is not the determining factor for the application of

text: Article 7(1)

text: (f) EUTMR, but rather is of evidential value with regard to the perception of the relevant public in the Member State(s) in question. Considering that the specific circumstances of individual Member States may not be widely known in EU territory, the objection letter should explain these circumstances clearly in order to make sure that the applicant is able to fully understand the reasoning behind the objection and is able to respond accordingly. In the framework of the European Union Intellectual Property Network (EUIPN), the Office and a number of trade mark offices in the European Union have agreed on a Common Practice (CP) in relation to trade marks contrary to public policy or accepted principles of morality (also referred to as Convergence Project 14 or CP14 Practice). The CP establishes general principles on the assessment of signs contrary to public policy or to accepted principles of morality, in particular, the common understanding of these concepts, their relationship, the criteria for their assessment, and different groups of signs that could be considered contrary to public policy and/or to accepted principles of morality, including illustrative examples.

text: 2 `Public Policy'

text: 2.1 Concept and categories

text: This objection derives from an assessment based on objective criteria. ‘Public policy’ is the body of all legal rules that are necessary for the functioning of a democratic society and the state of law. In the context of

text: Article 7(1)

text: (f) EUTMR, ‘public policy’ refers to the body of EU law applicable in a certain area, as well as to the legal order and the state of law as defined by the Treaties and secondary EU legislation, which reflect a common understanding of certain basic principles and values, such as human rights. The following is a non-exhaustive list of examples of when signs will be caught by this prohibition. Trade marks that contradict the basic principles and fundamental values of the

text: European Union political and social order and, in particular, the universal values on which the European Union is founded, such as human dignity, freedom, equality and solidarity and the principles of democracy and the rule of law, as proclaimed in the Charter of Fundamental Rights of the European Union (OJ C 83, 30/03/2010, p. 389).

text: On 27/12/2001, the Council of the European Union adopted Common

text: Position 2001/931/CFSP on the application of specific measures to combat terrorism (OJ L 344, 28/12/2001, p. 93), later updated by Council Decision (CFSP) 2017/1426 of 04/08/2017, updating the list of persons, groups and entities subject to Articles 2, 3 and 4 of Common Position 2001/931/CFSP on the application of specific measures to combat terrorism and repealing Decision (CFSP) 2017/154 (OJ L 204, 05/08/2017, p. 95, consolidated version available at http://eur-lex.europa.eu/legalcontent/EN/TXT/PDF/?uri=CELEX:32017D1426&from=EN), which contains a list of individuals and groups facilitating, attempting to commit or committing terrorist acts in EU territory. Any EUTM applied for that can be deemed to support or benefit an individual or a group on the list will be rejected as being against public policy.

text: 3 Accepted Principles of Morality

text: This objection concerns subjective values, but these must be applied as objectively as possible by the examiner. The provision excludes registration as European Union trade marks of blasphemous, racist, discriminatory or insulting words or phrases, but only if that meaning is clearly conveyed by the mark applied for in an unambiguous manner; the standard to be applied is that of the reasonable consumer with average sensitivity and tolerance thresholds (09/03/2012,

text: , ¡Que buenu ye! HIJOPUTA (fig.), EU:T:2012:120, § 21). The concept of accepted principles of morality refers to the fundamental moral values and standards to which a society adheres at a given time. Those values and norms are likely to change over time and vary in space (27/02/2020,

text: P, Fack Ju Göhte, EU:C:2020:118, § 39). The concept of morality in

text: Article 7(1)

text: (f) EUTMR is not concerned with bad taste or the protection of individuals’ feelings. In order to fall foul of

text: Article 7(1)

text: (f) EUTMR, a trade mark must be perceived by the relevant public, or at least a significant part of it, as going directly against the fundamental moral values and standards of society. It is not sufficient if the trade mark is only likely to offend a small minority of exceptionally puritanical citizens. Conversely, a trade mark should not be allowed to be registered simply because it would not offend the equally small minority at the other end of the spectrum who find even gross obscenity acceptable. The trade mark must be assessed by reference to the standards and values of ordinary citizens who fall between those two extremes (06/07/2006, R 495/2005-G, SCREW YOU, § 21). The examination is to be based on the perception of a reasonable person with average thresholds of sensitivity and tolerance, taking into account the context in which the mark may be encountered and, where appropriate, the particular circumstances of the part of the Union concerned. To that end, elements such as legislation and administrative practices, public opinion and, where appropriate, the way in which the relevant public has reacted in the past to that sign or similar signs, as well as any other factor which may make it possible to assess the perception of that public, are relevant (27/02/2020,

text: P, Fack Ju Göhte, EU:C:2020:118, § 42).

text: National legislation and practice of Member States are indicators to be taken into account in order to assess how certain categories of signs are perceived by the relevant public in those Member States (20/09/2011,

text: , Coat of Arms of the Soviet Union, EU:T:2011:498, § 58). However, the Office must not object to trade marks because of the mere fact that they are in conflict with national legislation and practice. National legislation and practice are considered to be factual evidence that enables an assessment of the perception of the relevant public within the relevant territory. Examples of national legislation taken into account as evidence of a trade mark being contrary to accepted principles of morality: use of symbols and names of unconstitutional parties or organisations is prohibited

text: in Germany (§ 86a dt. StGB (German Criminal Code), BGBl. No I 75/1998) and in Austria (§ 1 öst. Abzeichengesetz (Austrian Law on Insignias), BGBl. No 84/1960 in conjunction with § 1 öst. Verbotsgesetz (Austrian Prohibition Law), BGBl. No 25/1947); ‘use of symbols of totalitarianism’ (e.g. the sickle and hammer and the five-pointed

text: red star), specifically in a way to offend the dignity of victims of totalitarian regimes and their right to sanctity is prohibited in Hungary (Section 335 of Act C of 2012 on the Criminal Code) (20/09/2011,

text: , Coat of Arms of the Soviet Union, EU:T:2011:498). Signs that can be perceived as promoting the use of illegal drugs also fall under this provision. Taking into account, as factual evidence, that certain drugs are illegal in some Member States as well as the fact that the EU has undertaken drug policy initiatives to fight against illegal drugs, an objection should be raised. It is an objective indication that such signs would be perceived as going directly against the basic moral norms of society. The assessment made will take into account the term used in the mark applied for or the presence of other elements that could be perceived as promoting the use of illegal drugs. However, an objection will not be raised if the sign contains a reference to a drug that is for medical use, as the mark would not fall, in principle, within the prohibition of

text: Article 7(1)

text: (f) EUTMR. The examination of

text: Article 7(1)

text: (f) EUTMR should consider the context in which the mark is likely to be encountered, assuming normal use of the mark in connection with the goods and services covered by the application (06/07/2006, R 495/2005-G, SCREW YOU, § 21). Taking account of the goods and services for which registration of the mark is sought is normally necessary, since the relevant public may be different for different goods and services and, therefore, may have different thresholds with regard to what is clearly unacceptably offensive. For example, ‘a person who is sufficiently interested in [sex toys] to notice the trade marks under which they are sold is unlikely to be offended by a term with crude sexual connotations’ (06/07/2006, R 495/2005-G, SCREW YOU, § 29). Nevertheless, although the Court has held that the goods and services for which protection is sought are important for identifying the relevant public whose perception needs to be examined, it has also made it clear that the relevant public is not

text: necessarily only that which buys the goods and services covered by the mark, since a broader public than just the consumers targeted may encounter the mark (05/10/2011,

text: , PAKI, EU:T:2011:564, § 17-18). Accordingly, the commercial context of a mark, in the sense of the public targeted by the goods and services, is not always the determining factor in whether that mark would breach accepted principles of morality (09/03/2012,

text: , ¡Que buenu ye! HIJOPUTA (fig.), EU:T:2012:120, § 24; 26/09/2014,

text: , Curve, EU:T:2014:836, § 18-19). Illegality is not a necessary condition for giving rise to a conflict with accepted principles of morality: there are words or signs that would not lead to proceedings before the relevant authorities and courts, but that are sufficiently offensive to the general public to not be registered as trade marks (01/09/2011, R 168/2011-1, fucking freezing! by TÜRPITZ (fig.), § 16). Furthermore, there is an interest in ensuring that children and young people, even if they are not the relevant public of the goods and services in question, do not encounter offensive words in shops that are accessible to the general public. Dictionary definitions will in principle provide a preliminary indication as to whether the word in question has an offensive meaning in the relevant language (01/09/2011, R 168/2011-1, fucking freezing! by TÜRPITZ (fig.), § 25), but the key factor must be the perception of the relevant public in the specific context of how and where the goods or services will be encountered. However, the Boards of Appeal took the view that the word ‘kuro’ did not convey to the Hungarian public the offensive meaning of the word ‘kúró’ (meaning ‘fucker’ in English), since the vowels ‘ó’ and ‘ú’ are separate letters that are distinct from ‘o’ and ‘u’, which are pronounced differently and convey different meanings (22/12/2012, R 482/2012-1, kuro, § 12 et seq.). There is a clear risk that the wording of

text: Article 7(1)

text: (f) EUTMR could be applied subjectively so as to exclude trade marks that are not to the examiner’s personal taste. However, for the word(s) to be objectionable, it (they) must have a clearly offensive impact on people of normal sensitivity (09/03/2012,

text: , ¡Que buenu ye! HIJOPUTA (fig.), EU:T:2012:120, § 21). There is no need to establish that the applicant wants to shock or insult the relevant public; the fact that the EUTM applied for might be seen, as such, to shock or insult is sufficient (23/10/2009, R 1805/2007-1, PAKI, EU:T:2011:564, § 27, confirmed 05/10/2011,

text: , PAKI, EU:T:2011:564, § 20 et seq.). Finally, it is not only signs with a ‘negative’ connotation that can be offensive. The banal use of some signs with a highly positive connotation can also be offensive (e.g. terms with a religious meaning or national symbols with a spiritual and political value, like ‘ATATURK’ for the EU general public of Turkish origin (17/09/2012, R 2613/2011-2, ATATURK, § 31)). Raising an objection when a trade mark is contrary to accepted principles of morality does not, however, prevent the sign from being also contrary to public policy (e.g. the trade mark may be perceived by the relevant public as directly contrary to the basic moral norms of society and, at the same time, may contradict the basic principles and fundamental values of the EU political and social order).

text: 4 Examples

text: 4.1 Examples of rejected EUTM applications 4.2 Examples of accepted EUTM applications

text: Part B Examination Section 4 Absolute grounds for refusal Chapter 8

text: 1 The deceptive character

text: The EUTMR provides protection against deceptive European Union trade marks both as an absolute ground for refusing their registration [

text: Article 7(1)

text: (g) EUTMR] and after registration by allowing such marks to be revoked [

text: Article 58(1)

text: (c) EUTMR] or declared invalid [

text: Article 59(1)

text: (a) EUTMR] upon application of a third party at the Office.‑

text: Article 7(1)

text: (g) EUTMR provides that marks that are of such a nature as to deceive the public, for instance, as to the nature, quality or geographical origin of the goods or services, will not be registered. However, this list is not exhaustive and trade marks may be deceptive for other reasons. In order for a trade mark to be able to fulfil its essential role in the system of undistorted competition, it must offer a guarantee that all the goods or services bearing it have been manufactured or supplied under the control of a single undertaking which is responsible for their quality. A trade mark cannot perfom that role, however, where the information it contains is of such a nature as to deceive the public (05/05/2011,

text: , esf école du ski français (fig.), EU:T:2011:200, § 49-50 and the case-law cited; 27/10/2016,

text: , CAFFÈ NERO, EU:T:2016:635, § 48; 28/05/2021, R 406/2021‑1, MATE MATE, § 75).

text: Article 7(1)

text: (g) EUTMR requires the existence of actual deceit or a sufficiently serious risk that the consumer will be deceived (29/06/2022,

text: , La Irlandesa, § 55; 13/05/2020,

text: , BIO-INSECT Shocker, EU:T:2020:199, § 72; 02/03/2020, R 1499/2016‑G, LA IRLANDESA 1943 (fig.), § 25; 08/06/2017,

text: , Gözze / VVB, EU:C:2017:434, § 54; 30/03/2006,

text: , Elizabeth Emanuel, EU:C:2006:215, § 47, and the case-law cited therein). Taking account of the points above the following two principles are crucial to the practice of the Office in this area. 1. The fact that

text: Article 7(1)

text: (g) EUTMR might apply to some goods or services falling within a broader category does not mean that an objection should be raised for that category, as there is no inconsistency between the information conveyed by the sign and the category of goods/services applied for.

text: Article 7(1)

text: (g) EUTMR only seeks to prevent the registration of trade marks of such a nature as to deceive the public. Therefore, as long as non-deceptive use of the EUTM is possible for other goods and services within the broader category, the Office will assume good faith on the part of the Applicant (e.g. an EUTM that may be deceptive for whiskey will not be objected to for alcoholic beverages if it is not deceptive for other goods within that category) (29/06/2022,

text: Case T‑306/20

text: , La irlandesa 1943 (fig.), ECLI:EU:T:2022:404, § 71-72). 2. The relevant public is composed of reasonably well-informed, observant and circumspect individuals meaning that the average consumer is reasonably attentive and not particularly vulnerable to deception (01/08/2017, R 2232/2016‑5, Novolimus, § 17).

text: 2 The test for deceptiveness

text: In accordance with case-law( ), the Office will object on the grounds of deceptiveness where two cumulative criteria are met: The relevant public recognises the sign as conveying a specific, clear and

text: unambiguous message regarding the nature, quality or geographical origin (or other characteristic) of goods and services worded in such a manner that nondeceptive use is impossible. The relevant public might rely on that message and purchase goods or services in

text: the mistaken belief that they possess a certain characteristic they cannot have (i.e. there is actual deceit or a sufficiently serious risk of being deceived).

text: 2.1 Conveying a specific, clear and unambiguous message in relation to the goods and services

text: 2.1.1 A mark can be deceptive only when it conveys a clear message regarding the characteristics of the goods and services

text: Deceptiveness is assessed on the basis of all of the possible perceptions of the mark by the relevant consumer. For example, the sign ‘CAFFÈ NERO’ could be perceived by Italian speakers as referring to (i) black coffee (i.e. coffee served as a beverage without cream, milk or sugar) or (ii) a coffee house with the name ‘NERO’. Both meanings are relevant . If the mark is deceptive under one of the possible perceptions , it will be objected to pursuant to

text: Article 7(1)

text: (g) EUTMR . It is irrelevant that the consumer might not be deceived by an alternative perception of the sign, as long as the mark continues to refer to the meaning that is perceived as deceptive (29/11/2023,

text: , MYBACON, EU:T:2023:769, § 54-57, 59; 13/05/2020,

text: , Bio-insect shocker, EU:T:2020:199, § 84-85; 27/10/2016,

text: , CAFFÈ NERO, EU:T:2016:635, § 48-49). If the sign does not convey any clear message regarding the characteristics of the goods and services, then it will not be sufficiently specific to be deceptive (24/09/2008,

text: , I.T.@Manpower, EU:T:2008:396, § 65 & 66; 29/11/2018,

text: , KHADI / KHADI, EU:T:2018:858; § 53). For instance, a mere calling to mind of something connected with the goods and services or at the very most hints at them, or influencing the imagination of the public, are also not sufficient to

text: establish deception (24/09/2008,

text: , I.T.@Manpower, EU:T:2008:396, § 67-68; 27/06/2017,

text: , ANTICO CASALE, EU:T:2017:439, § 51). The mere presence of an element that could, on its own, convey a deceptive meaning is not enough to conclude that the sign conveys a deceptive meaning since it is the perception of the sign as a whole that matters. In order to determine whether an element in the sign conveys a clear message to the consumer, account must be taken of all the other elements of the sign , as these are likely to influence the outcome of the assessment . In principle, a sign will not be considered as clearly conveying a message indicating a characteristic of the goods and services if: 1. the combination of the ‘deceptive’ element with additional elements pinpoint a business or establishment rather than convey a message about a good or service or their characteristics; 2. the sign contains a conceptual meaning/message that precludes the element from being perceived in a deceptive way; 3. the sign’s combination of elements creates a logical and conceptual unit that should not be artificially dissected; 4. the sign contains a reference to various goods and/or services and, therefore, will not be perceived as an indication regarding specific goods and services.

text: Table 4: Examples of non-deceptive trade marks (as a whole the sign does not convey specific information regarding the good(s) at stake)

text: In principle, a sign will be considered as clearly conveying a message indicating a characteristic of the goods and services if:

text: elements of the sign, and not linked to another logical and conceptual unit of the sign; or the overall sign, as a logical and conceptual unit, reinforces the perception of

text: the ‘deceptive’ element (the other elements are perceived as mere qualifiers of the descriptive term - colour, size, etc. - or are a graphic representation of the descriptive term).

text: Table 5: Example of deceptive trade marks (as a whole the sign conveys specific information regarding the good(s) at stake)

text: 2.1.2 A mark will be deceptive only when the deceptive message relates to the goods and services as they are specified

text: When the sign conveys a specific, clear and unambiguous message, it must be assessed in relation to the exact manner in which the goods and services are specified. If the message could be deceptive for specific goods and services within a category, this will not result in an objection if the message is not deceptive for other goods and services in the category. If non-deceptive use of the mark is possible for the goods and services as

text: specified, the mark is not deceptive. When broad categories are used in the list of goods/services, the Office does not object where the mark could be deceptive for only some of the goods/services falling within the categories. For example, the Office would not raise an objection on deceptiveness for the mark JAPAN WHITE in relation to rice. It is irrelevant that rice includes brown rice (on which the mark would be deceptive) because white rice is also included (and use would not be deceptive for these goods). The Office assumes that the mark will be used in a non-deceptive manner and the mere fact that a broad category is used does not represent a sufficiently serious risk of deception once non-deceptive use is possible (30/03/2006,

text: , Elizabeth Emanuel, EU:C:2006:215, § 47).

text: Article 7(1)

text: (g) EUTMR only seeks to prevent the registration of trade marks of such a nature as to deceive the public, and there is no reason for the Office to presume that the mark will be used in a deceptive manner. Therefore, when there is no inconsistency between the information conveyed by the sign and the goods/services applied for, the specification does not need

text: to be limited to any particular quality linked to the message transmitted by the sign, such as their geographical origin, because any such characteristic of the designated goods/services is covered by the list, and non-deceptive use of the mark is possible (29/06/2022,

text: Case T‑306/20

text: , La irlandesa 1943 (fig.), ECLI:EU:T:2022:404, § 71-72). If non-deceptive use of the trade mark is impossible for the goods/services as

text: applied for, the mark will be found deceptive.

text: For example, an objection should be raised against the trade mark

text: filed for, inter alia, still waters, for which non-deceptive use is not possible. The word ‘soda’ would create a clear expectation of a carbonated drink, which still waters obviously are not (21/11/2017, R 1636/2017‑2, EASY SODA (fig.), § 19).

text: The trade mark JAPAN WHITE for rice; husked rice; brown rice; polished rice; cereal preparations describes characteristics of the goods at issue, namely that they originate from Japan and they are white in colour. Non-deceptive use is impossible for brown rice as there is a clear contradiction between the message conveyed by the mark and the nature and colour of the good at issue (‘which can never be white’) (20/03/2018, R 694/2017‑1, JAPAN WHITE, § 52, 54).

text: 2.2 Existence of actual deceit or a sufficient serious risk of deceit

text: Where a sign conveys a specific, clear and unambiguous message that is incongruent with the goods and services specified in the application, this per se is not enough for it to pose a sufficiently serious risk of deception under

text: Article 7(1)

text: (g) EUTMR. For there to be a risk of deception, it would also need to be likely that the consumer would rely on the message in the sign and be deceived into purchasing the goods or services, in the mistaken belief that they possess a characteristic indicated but which they cannot have. Refusing registration on the grounds of deceptiveness, therefore, ‘presuppose[s] the existence of actual deceit or a sufficiently serious risk that the consumer will be deceived’ (04/03/1999,

text: , Cambozola, EU:C:1999:115, § 41; 30/03/2006,

text: , Elizabeth Emanuel, EU:C:2006:215, § 47, 48-49; 27/10/2016,

text: CAFFÈ NERO, EU:T:2016:635, § 45; invalidity 08/06/2017,

text: , Gözze / VVB (Cotton Flower), EU:C:2017:434, § 54, 56‑57). The threshold for applying

text: Article 7(1)

text: (g) EUTMR must not be set too low as the relevant public normally comprises reasonably well-informed, observant and circumspect individuals, and the average consumer is usually reasonably attentive and not highly vulnerable to deception. In the Elizabeth Emanuel case, the Court made a distinction between when consumers are simply influenced by a trade mark in a misleading way, and when the consumer is actually (or could reasonably be) deceived by the sign. Only when the latter happens can the grounds for objection be raised. When evaluating this, the Office will take into account the characteristics of the goods and services at issue together with market reality and consumer habits and perceptions. When assessing the risk of deceptiveness in relation to market reality and consumer habits and perceptions, the following can be considered: The place where the goods are normally displayed for sale

text: The risk of deceptiveness is higher when the goods are placed next to each other. For example, this is usually the case with beer and cider, whereas wines would generally be on display in a specific and easily recognisable section of a shop. Another example would be product substitutes such as vegetarian and non-vegetarian foodstuffs, which are to be found directly alongside one another in the (refrigerated) shelves of a supermarket. The packaging of the goods

text: Packaging is usually linked to the nature of the goods themselves and can therefore play a role in the risk of deceit towards the consumer. Similar packaging can increase the risk of deceptiveness whereas different packaging can exclude it (e.g. liquid vs solid goods, transparent vs non-transparent packaging). The price

text: A large price difference between goods can help to exclude deception as the reasonably observant consumer will be aware of the price range of relevant goods. For example, for water and spirit drinks, the significant price difference is likely to rule out any serious risk of being deceived into purchasing one in the belief that it is the other. Consequently, a mark on whiskey containing the message ‘water of life’ (which translates the Irish ‘uisce beatha’ for whiskey [and from which the term 'whiskey' is derived]) will not result in consumers buying whiskey in the belief that it is water. The price differential alone would rule this out (as well as other factors). New products and marketing strategies

text: The Office must take account of developments in the market such as the mixing of new flavours: water and aromatised water, coffee containing cocoa, etc.

text: Level of attention of the consumer

text: For common/everyday goods, the degree of attention of the consumer is lower than for less common goods, and the risk of deceit is higher. For example, foodstuffs are purchased on a daily basis in the supermarket and the consumer’s attention with regard to these foodstuffs is not high (08/06/2020, R 2/2020‑5, NEXT LEVEL MEAT, § 20, 29). As consistently pointed out by case-law, common goods such as coffee, tea, mate, cocoa and artificial coffee are all sold in packaging that is very similar, and as the consumer’s level of attention is not high, they often buy these goods more hastily and quickly, without necessarily taking the time to analyse the wording on the packaging. It is therefore likely that consumers will pick (these) common goods from the shelf in the mistaken assumption that they are or contain the product indicated by the sign: coffee, tea, mate, cocoa or artificial coffee (27/10/2016,

text: , CAFFÈ NERO, EU:T:2016:635, § 45; 26/10/2017,

text: , Klosterstoff, EU:T:2017:759, § 45; 16/08/2019, R 883/2019‑2, Ralph’s coffee, § 13; 28/05/2021, R 406/2021‑1, MATE MATE, § 77). The relevant public for meat subsitutes is the general public, which normally purchases these goods quickly and without paying great attention to them. The relevant public displays at most an average degree of attention and places little cognitive effort into their purchase. These goods are food products for everyday consumption by consumers as a whole. They are inexpensive goods, generally sold in supermarkets, the purchase of which is not preceded by a long period of reflection. They are intended for general consumption and are not only intended for vegetarians or vegans, since it is possible that anyone could at some time or another acquire such goods, be it regularly or only occasionally. Consumers may be led to purchase the products in haste, without taking the time to analyse the text on the packaging (29/11/2023,

text: , MYBACON, EU:T:2023:769, § 35-41).

text: 2.3 Examples of deceptive and non-deceptive trade marks

text: The following are examples of marks that were found to be deceptive with regard to all or part of the goods for which protection was sought. Deceptive marks ( )

text: The following are examples of marks that were found not to be deceptive with regard to all or part of the goods for which protection was sought:

text: Non-deceptive marks

text: 3 Categories of deceptiveness

text: Trade marks may be deceptive under different circumstances, as the list included in

text: Article 7(1)

text: (g) EUTMR (nature, quality or geographical origin of the goods or services) is not exhaustive. Different categories of deceptiveness can be established in relation to the goods and services, and, in particular, the following: quality and nature, geographical origin and official approval.

text: 3.1 Quality and nature of the goods and services

text: These two categories are listed under

text: Article 7(1)

text: (g) EUTMR, but they often overlap and the distinction has little practical significance (see examples of this category of deceptiveness under Section 2).

text: 3.2 Geographical origin of the goods and services

text: The Office will not raise an objection on the grounds of deception based upon

text: the applicant’s geographical location (address) because it bears no relation to the geographical origin of the goods and services, that is to say, the actual place of production/offering of the goods and services covered by the mark. For example, under

text: Article 7(1)

text: (g) EUTMR, the Office will not object to a figurative mark containing the words MADE IN USA for clothing in Class 25 that is filed by a company with its seat in Sweden. In such cases, the Office makes no link between the address of the applicant and the provenance of the goods. Deception would nonetheless arise in the hypothetical case of a figurative mark containing the words MADE IN USA, for a specifically limited list of goods — for

text: example, clothing articles made in Vietnam.

text: The sign could evoke in the consumers’ minds some impressions/expectations as to the geographical origin of the goods or of their designer that may not correspond to reality. For example, trade marks such as ALESSANDRO PERETTI or GIUSEPPE LANARO (invented examples) covering clothing or fashion goods in general may suggest to the relevant public that these goods are designed and produced by an Italian stylist, which may not be the case. However, such a circumstance is not sufficient per se to render those marks misleading for non-Italian goods. Indeed, when the sign is merely evocative there is no clear contrast between the impression/expectation a sign may evoke and the characteristics/ qualities of the goods and services it covers. The following are two examples where the marks concerned were not found to be deceptive, particularly as regards the geographical origin of the goods and services.

text: 3.3 Official approval

text: Under the practice of the Office, trade marks that could evoke official approval, status or recognition without giving the firm impression that the goods/services issue from, or are endorsed by, a public body or statutory organisation, are acceptable.

text: The following are three examples where the marks concerned, although allusive or suggestive, were not found to be deceptive.

text: 4 Relation with other EUTMR provisions

text: As each ground is assessed on its own merits and according to each of the goods and services applied for, an objection can be based on both descriptiveness / lack of distinctiveness and deceptiveness.

text: Furthermore, when, in the course of proceedings, an EUTM applicant proposes a limitation, for example in an attempt to overcome an objection on descriptiveness, lack of distinctiveness or conflict with a GI, the Office will implement the requested limitation, and make sure that the mark has not become deceptive as a consequence of this limitation (for more information on the restriction of goods and services giving rise to a new ground for refusal see Section 4 Absolute grounds for refusal — Chapter 1 General principles, Restrictions of goods and services -2 Dialogue with the Applicant).

text: An originally broad category of goods and services might, after restriction, be specified in such a way as to be objected to under

text: Article 7(1)

text: (g) EUTMR, even though it was not originally objectionable under this ground.

text: The test of deceptiveness is considered prima facie to be the same in examination, and in some post registration actions, namely revocation on misleading use (4.2.1 Revocation on misleading use (

text: Article 58(1)

text: (c) EUTMR) and invalidity based on absolute grounds (4.2.2 Invalidity (

text: Article 59(1)

text: (a) EUTMR).

text: However, the scope of the assessment of cancellation proceedings is limited to the legal arguments and factual submissions presented by the applicant of the revocation or invalidity proceeding, also taking into consideration well-known facts.

text: For further information regarding cancellation, please see the GuidelinesPart D, Cancellation.

text: Article 58(1)

text: (c) EUTMR does not contain any reference to

text: Article 7(1)

text: EUTMR but it stipulates that if, in consequence of the use made of the trade mark in respect of the goods or services for which it is registered, the trade mark is liable to mislead the public, particularly as to the nature, quality or geographical origin of those goods and services, the rights of the proprietor of the EUTM should be declared to be revoked.

text: The CJEU specifically stated that the conditions for revocation according to

text: Article 12(2) of Directive 89/104/EEC

text: , the wording of which is in essence identical to

text: Article 58(1)

text: (c) EUTMR, are the same as those for applying the absolute

text: grounds of deceptive marks corresponding to

text: Article 7(1)

text: (g) EUTMR (30/03/2006,

text: , Elizabeth Emanuel, EU:C:2006:215, § 53). However, unlike

text: Article 7(1)

text: (g) EUTMR, the relevant point of time under

text: Article 58(1)

text: (c) EUTMR is the situation after the registration of the mark (16/05/2017, R 1289/2016‑2, JOHN COR, § 14, § 20). It requires that account be taken of the actual use of the mark and thus of evidence subsequent to its filing (29/06/2022,

text: Case T‑306/20

text: , LA IRLANDESA 1943 (fig.), ECLI:EU:T:2022:404, § 66). When a list of goods and services is specified in such a way that specific conditions apply, and, after registration, the owner of the mark uses the sign on the market on goods or services in a manner not conforming to those conditions, the mark is liable to be revoked under

text: Article 58(1)

text: (c) EUTMR upon cancellation filed by a third party. This could happen, in particular, when, in order to avoid an objection based on a conflict with i) a GI [

text: Article 7(1)

text: (j) EUTMR], (ii) a TTW [

text: Article 7(1)

text: (k) EUTMR] or (iii) a TSG [

text: Article 7(1)

text: (l) EUTMR] the applicant limits the goods and/or services to conform with the use of (i) a GI, (ii) a TTW or (iii) a TSG respectively, but in the market the goods do not in fact conform with the prescribed use as provided in the relevant EU regulations. For more on GIs, TTWs and TSGs see the Guidelines, Part B, Examination, Section 4, Absolute grounds for refusal, Chapter 10, Trade marks in conflict with geographical indications (

text: Article 7(1)

text: (j) EUTMR), Chapter 11, Trade marks in conflict with traditional terms for wines (

text: Article 7(1)

text: (k) EUTMR) and Chapter 12, Trade marks in conflict with traditional specialities guaranteed (

text: Article 7(1)

text: (l) EUTMR).

text: A registered EUTM enjoys a presumption of validity, and can be declared invalid only where the EUTM has been registered contrary to the provisions of

text: Article 7

text: EUTMR, including

text: Article 7(1)

text: (g) EUTMR. Therefore,

text: Article 7(1)

text: (g) EUTMR is applied in the same manner during examination and during an invalidity action brought under

text: Article 59(1)

text: (a) EUTMR in relation with

text: Article 7(1)

text: (g) EUTMR. A trade mark will be found to be invalid if it can be established that the sign filed for the registration as a mark was per se of such a nature as to deceive the consumer at the time of filing of the application for registration, since the subsequent management of that sign is irrelevant (8/06/2017,

text: , W.F. Gözze Frottierweberei and Gözze, EU:C:2017:434, § 55-56). The consideration of subsequent evidence to the date of filing of a trade mark application may be taken into account only if it clarifies the circumstances of the situation as they were on that date (03/06/2009,

text: , Flugbörse, EU:T:2009:172, § 19, 28) (all referred to in 29/06/2022,

text: , La irlandesa 1943 (fig.), ECLI:EU:T:2022:404, § 66-68).

text: Part B Examination Section 4 Absolute grounds for refusal Chapter 9

text: 1 Introduction

text: Article 7(1)

text: (h) EUTMR incorporates

text: Article 6

text: ter of the Paris Convention for the Protection of Industrial Property (PC) into the European Union trade mark system.

text: Article 7(1)

text: (i) EUTMR, on the other hand, protects badges, emblems and escutcheons that are not protected under

text: Article 6

text: ter PC but are of particular public interest. In accordance with

text: Article 7(1)

text: (h) and (i) EUTMR, the Office will refuse the registration of trade mark applications that contain or consist of these protected symbols or any imitation thereof from a heraldic point of view unless the applicant provides authorisation for their registration from the competent authority.

text: The objective of

text: Article 7(1)

text: (h) EUTMR is to prevent symbols protected under

text: Article 6

text: ter PC, or any imitation thereof from a heraldic point of view, from being registered as EU trade marks, or as elements of EU trade marks, without the authorisation of the competent authority. These protected symbols are: armorial bearings, flags and other state emblems,

text: official signs and hallmarks indicating the control and warranty,

text: the armorial bearings, flags, names, abbreviations and other emblems of IGOs.

text: Except for state flags (

text: Article 6

text: ter(3)(a) PC), to enjoy such protection, these symbols need to have been communicated under

text: Article 6

text: ter PC by the competent authorities via the International Bureau of WIPO. WIPO publishes a biannual publication with the list of communicated symbols which are then published in the

text: Article 6

text: ter Express Database on the WIPO website (see below 2.1.4 Search for protected symbols) under a unique reference number (e.g. ES5, JP3, QO188). The date of publication of the communication which is considered to constitute the reception date is the date mentioned in the database. The protection granted to those symbols applies only to trade marks registered more than two months after the reception of this communication (

text: Article 6

text: ter(6) PC). The protection granted under

text: Article 7(1)

text: (h) EUTMR extends to the protected symbols of all countries that can invoke

text: Article 6

text: ter PC including non-EU countries.

text: 2.1.1 Armorial bearings, flags and other emblems

text: Armorial bearings normally consist of a design or image depicted on a shield. An example of an armorial bearing is the coat of arms of Spain.

text: Published under ES5 A state flag is defined by the constitution of the state or by a specific law of that state. Normally, a state will have only one state flag. For instance, the Spanish flag is defined in Article 4 of the Spanish Constitution; the French flag is defined in Article 2 of the French Constitution; and the German flag is defined in Article 22 of the German Constitution. ‘Other state emblems’ is an expression that covers symbols of the sovereignty of a state, such as a representation of the national crown, an official seal of the state, or flags other than state flags, namely those of the first political division of a federal state. For instance: Germany has requested protection for the flags of each Bundesland (‘federal state’).

text: Published under DE34 (flag of the federal state of Berlin) The Netherlands has requested protection for the national crown,

text: Published under NL48. The USA has requested protection for its official seal,

text: Published under US1.

text: 2.1.2 Official signs and hallmarks indicating control and warranty

text: The purpose of official signs and hallmarks indicating control and warranty is to certify that a state, or an organisation that has been duly appointed by a state for that

text: purpose, has checked that certain goods and services meet specific standards or are of a given level of quality. There are official signs and hallmarks indicating control and warranty in several states, for products such as precious metals, or butter, cheese, meat, electrical equipment, etc. Official signs and hallmarks can also apply to services – for instance, those relating to education, tourism, etc. Typical examples are signs of warranty for metals, such as:

text: These symbols are normally communicated through WIPO for specific products and services, such as:

text: 2.1.3 Armorial bearings, flags, names, abbreviations and other emblems of intergovernmental organisations

text: Intergovernmental organisations of which one or more Member States of the PC is a member enjoy protection for their armorial bearings, flags, names, abbreviations and other emblems when these symbols have been communicated via WIPO. For instance, the following signs enjoy protection under the Paris Convention:

text: The European Union has requested, for instance, protection for the following signs, abbreviations and names:

text: 2.1.4 Search for protected symbols

text: Relevant information about protected symbols is found in the WIPO

text: Article 6

text: ter Express Database. The results can be filtered by ‘state’ (i.e. country), ‘category’ (i.e. the type of ‘emblem’) and ‘Vienna Classification’ (i.e. figurative elements). Users can also search for similar images within the 6ter signs via the ‘Image search’ option. An image search (e.g. https://images.google.com/) might give some basic hints for identifying a protected emblem. State flags enjoy protection without any need for communication through WIPO and are normally not in the WIPO

text: Article 6

text: ter database (except if they have been communicated through WIPO as a state emblem). Tools for finding flags, such as http:// www.flagid.org or http://www.flag-finder.com can be consulted.

text: In order to fall within the scope of

text: Article 7(1)

text: (h) EUTMR, a trade mark must consist of or contain an identical reproduction or a ‘heraldic imitation’ of a protected symbol in accordance with

text: Article 6

text: ter(1)(a) and (b) PC (see paragraph 2.2.1 Identical reproduction or heraldic imitation of a protected symbol).

text: Articles 6

text: ter(1)(c) and (2) PC, set out additional requirements for the protection of official signs or hallmarks indicating control and warranty and for the symbols of IGOs (see paragraph 2.2.2 Additional requirements for specifically protected symbols). Trade marks that would fall within the scope of

text: Article 7(1)

text: (h) EUTMR can nevertheless be registered when the competent authority gives its authorisation to the registration of the trade mark (see paragraph 4 Authorisation for the registration of trade marks containing protected symbols or heraldic imitations thereof).

text: 2.2.1 Identical reproduction or heraldic imitation of a protected symbol

text: The Office will raise an objection when a trade mark consists of or contains an identical reproduction or a ‘heraldic imitation’ of a protected symbol.

text: 2.2.1.1 Identical reproduction

text: The Office considers that there is an identical reproduction of a protected symbol when the sign reproduces, without any modification or addition, all the elements constituting the protected symbol or where, viewed as a whole, it contains differences that are so insignificant that they may go unnoticed by the relevant consumer.

text: 2.2.1.2 Heraldic imitation

text: The prohibition against the imitation of a protected symbol applies only to imitations

text: from a heraldic perspective.

text: Heraldry is a discipline relating to the design, display and study of armorial bearings, as well as related disciplines, such as vexillology (study of flags). To assess whether a sign contains the heraldic imitation of a protected symbol, the Office will consider the heraldic description of the symbol, not how it appears in daily use (16/07/2009,

text: P &

text: P, RW feuille d’érable, EU:C:2009:477, § 48). The heraldic description is a formal description that identifies the heraldic elements represented in the protected symbol but does not focus on the specific detail of each element, which can be displayed with some degree of variation or artistic licence. For example, for state flags the relevant elements of the heraldic description are usually the shape, the colours and the format (proportion and pattern) whereas for armorial bearings the heraldic description would normally include metals (gold/silver), colours, furs (animal pelts), and charges (devices or images).

text: By way of example, the heraldic description of the EU flag ( )is the following: ‘on an azure background, a circle composed of twelve five-pointed gold stars whose points do not touch’ (13/03/2014,

text: , European Network Rapid Manufacturing (fig.), EU:T:2014:120, § 21). The Office will look at the overall combination of the elements of the heraldic description and see if it is reproduced in the mark as perceived by the relevant public (16/07/2009,

text: P, RW (fig.), EU:C:2009:477, § 50). A difference detected by a specialist in heraldic art between the trade mark applied for and the state emblem will not necessarily be perceived by the average consumer and, therefore, in spite of differences in certain heraldic details, the contested trade mark may be an imitation of the emblem in question within the meaning of

text: Article 6

text: ter PC (16/07/2009,

text: P &

text: P, RW feuille d’érable, EU:C:2009:477, § 50 et seq.; 25/05/2011,

text: , Suscipere et finire, EU:T:2011:246, § 24-25). In the assessment of heraldic imitation, the Office will take into consideration the following: Colours are relevant, however:

text: ○ A black and white depiction of a protected symbol may still be considered a heraldic imitation provided it allows a specific symbol to be recognised (21/04/2004,

text: , ECA, EU:T:2004:110, § 45; 28/02/2008,

text: , RW (fig.), EU:T:2008:55, § 68). ○ Slight differences in the actual colour are irrelevant (light blue v dark blue). Heraldry does not normally distinguish between different tones of the same colour (15/01/2013,

text: , EUROPEAN DRIVESHAFT SERVICES EDS (fig.), EU:T:2013:12, § 42). ○ Gold and silver: Gold is often reproduced as yellow (20/05/2009, R 1041/2008‑1, kultur IN DEUTSCHLAND + EUROPA (fig.), § 33) and silver as grey. When part of the protected symbol is not represented in the trade mark, a heraldic

text: imitation can still be found when a significant part of the protected symbol is still visible. For example, this will be the case when the protected symbol is hidden by another element but where a significant part of the protected symbol is still visible. The size of the protected symbol contained in the trade mark is irrelevant as long as

text: it is identifiable. A moving flag may be considered a heraldic imitation when the effect of a moving

text: flag is clearly represented in the trade mark and the shape and format (proportion and pattern) of the flag are visible.

text: 2.2.1.3 Examples of heraldic imitations

text: Heraldic imitation found

text: Heraldic imitation not found

text: 2.2.2 Additional requirements for specific protected symbols

text: 2.2.2.1 Official signs or hallmarks indicating control and warranty

text: For official signs or hallmarks indicating control and warranty,

text: Article 7(1)

text: (h) EUTMR is applicable when the mark has been applied for goods and services of the same or a similar kind to those concerned. An objection will be raised, therefore, depending on the goods and services applied for.

text: 2.2.2.2 Armorial bearings, flags, names, abbreviations or any other emblems of an IGO and the misleading connection

text: For armorial bearings, flags, names, abbreviations or any other emblems of an IGO,

text: Article 7(1)

text: (h) EUTMR is applicable when (i) the protected symbol as displayed in the sign would suggest to the public that there is a connection between the sign and the organisation concerned; and (ii) the suggestion of a connection between the user [the applicant] and the organisation is misleading (

text: Article 6

text: ter(1)(c) PC). Therefore, in order to determine that

text: Article 7(1)

text: (h) EUTMR is applicable, it should be assessed whether a misleading connection is perceived by the public, which is carried out in two steps: a) Firstly, the Office assesses whether it is likely that the public will perceive a

text: connection between the organisation concerned and the applicant.

text: The mere fact that a trade mark contains an identical reproduction or a heraldic imitation of a protected symbol is not sufficient to reach the conclusion that the public will see a connection between the organisation concerned and the applicant of the EU trade mark. Such connection can exist when the goods and services applied for can be linked to the activities of the IGO and could lead the public to believe they originate from it, have been approved by it, or are otherwise linked to it (15/01/2013,

text: , EUROPEAN DRIVESHAFT SERVICES EDS (fig.), EU:T:2013:12, § 61). Even though the European Union is not a state in terms of international law, but rather an international intergovernmental organisation, its area of activity is equated with that of a state (12/05/2011, R 1590/2010‑1, EUROPEAN DRIVESHAFT SERVICES EDS (fig.), § 54; 15/01/2013,

text: , EUROPEAN DRIVESHAFT SERVICES EDS (fig.), EU:T:2013:12, § 70) and any goods or services can, in principle, be connected to the European Union. If the goods and services applied for are linked to the activities of the IGO, the Office will assess whether the elements reproduced in the sign will establish a connection for the relevant consumer. This assessment includes those elements that are not linked to the protected emblem but which can still alter the perception of this connection in the eyes of the public (01/12/2021,

text: , Steirisches Kürbiskernöl g.g.A GESCHÜTZTE GEOGRAFISCHE ANGABE (fig.), EU:T:2021:851, § 41). b) Secondly, the Office assesses whether the connection between the user [the

text: applicant] and the organisation perceived by the public (see a) above) is misleading. When the relevant public perceives in the sign a connection with the authority to which the protected symbol relates (‘the organisation’), but there is no connection between the organisation and the applicant, such perception is misleading and an objection should be raised. On the contrary, no objection will be raised when a trade mark application is filed by the organisation or by an entity linked to it, because in such cases, the perceived connection cannot be considered to be misleading. For example, EUTM 18 839 087 reproduces the symbol of the EUIPO (communicated through WIPO and published under reference QO1742). The application was filed by the EUIPO itself and was therefore not misleading as to the existing connection between the user and the organisation.

text: The objective of

text: Article 7(1)

text: (i) EUTMR is to prevent badges, emblems or escutcheons that are not protected under

text: Article 7(1)

text: (h) EUTMR but that are of particular public interest from being registered as EU trade marks, or as elements of EU trade marks, without the authorisation of the competent authority.

text: Article 7(1)

text: (i) EUTMR protects badges, emblems or escutcheons that are not protected under

text: Article 7(1)

text: (h) EUTMR but that are of particular public interest.

text: Article 7(1)

text: (i) EUTMR does not define symbols of ‘particular public interest’. The nature of these symbols can vary and may include, for example, symbols of states, international intergovernmental organisations, or public bodies or administrations, such as provinces or municipalities. The requirement for a ‘particular public interest’ implies that such interest is established in a public document, for example a national or international legal instrument, a regulation or another normative act. The particular public interest can exist in the EU or in part of the EU (10/07/2013,

text: , MEMBER OF €e EURO EXPERTS (fig.), EU:T:2013:364, § 45-46). A particular public interest can exist when the emblem has a particular link with the organisation itself or even one of the activities carried out by the organisation (10/07/2013,

text: , MEMBER OF €e EURO EXPERTS (fig.), EU:T:2013:364, § 44). The following signs enjoy protection under

text: Article 7(1)

text: (i) EUTMR: the Euro symbol (€, as defined by the European Commission);

text: the EU symbols for ‘protected designation of origin’ and for ‘protected geographical

text: indication’. The EU has exclusive competence to adopt legal acts that protect indications of origin, and those symbols are considered of particular public interest. The use of those symbols is regulated through

text: Regulation (EU) 2024/1143

text: of the European Parliament and of the Council of 11 April 2024 on geographical indications for wine, spirit drinks and agricultural products, as well as traditional specialities guaranteed, and optional quality terms for agricultural products (

text: Article 37

text: among others). See also 01/12/2021,

text: , Steirisches Kürbiskernöl g.g.A GESCHÜTZTE GEOGRAFISCHE ANGABE (fig.), EU:T:2021:851, § 38);

text: the symbols protected under the Geneva Conventions and their additional

text: protocols, that is to say, the red cross, the red crescent and the

text: red crystal emblems and their names (https://www.icrc.org/en/war-and-law/

text: emblem); the Olympic Symbol protected under the Nairobi Treaty on the Protection of the

text: Olympic Symbol (http://www.wipo.int/treaties/en/text.jsp?file_id=287432).

text: Article 7(1)

text: (i) and (h) EUTMR have a similar scope of application and provide an equivalent level of protection (10/07/2013,

text: , MEMBER OF €e EURO EXPERTS (fig.), EU:T:2013:364, § 39; 01/12/2021,

text: , Steirisches Kürbiskernöl g.g.A GESCHÜTZTE GEOGRAFISCHE ANGABE (fig.), EU:T:2021:851, § 25). Accordingly,

text: Article 7(1)

text: (i) EUTMR is subject to the same conditions as those governing the protection of symbols under

text: Article 7(1)

text: (h) EUTMR. Therefore, the rules regarding the assessment of identical reproduction and heraldic imitation under

text: Article 7(1)

text: (h) EUTMR (see paragraph 2.2.1, Identical reproduction or heraldic imitation of a protected symbol), as well as the rules regarding the assessment of whether a misleading connection is perceived under

text: Article 7(1)

text: (h) EUTMR (see paragraph 2.2.2.2, Armorial bearings, flags, names, abbreviations or any other emblems of an IGO and the misleading connection) apply to the assessment under

text: Article 7(1)

text: (i) EUTMR. Trade marks that would fall within the scope of

text: Article 7(1)

text: (i) EUTMR can also nevertheless be registered when the competent authority gives its authorisation to the registration of the trade mark (see paragraph 4, Authorisation for the registration of trade marks containing protected symbols or heraldic imitations thereof).

text: Reproduction/heraldic imitation found

text: Reproduction/heraldic imitation not found

text: 3.2.2 Examples of misleading connection

text: Misleading connection with the organisation

text: No connection with the IGO

text: 4 Authorisation for the registration of trade marks containing protected symbols or heraldic imitations thereof

text: EUTM applications can be registered despite being objectionable under

text: Article 7(1)

text: (h) or (i) EUTMR, if the applicant provides the Office with authorisation from the competent authority to include the protected symbol in its trade mark. The authorisation must cover registration as a trade mark. General announcements or authorisations rendered by competent authorities under national law to use a protected symbol in trade might not be sufficient. It will be examined on a case-by-case basis whether such authorisations specifically authorise the use of an emblem in a trade mark (26/02/2015, R 1166/2014‑1, ALPENBAUER BAYERISCHE BONBONLUTSCHKULTUR (fig.), § 23-29). It is up to the applicant to submit the authorisation. If an EUTM applied for contains or consists of the heraldic imitation of protected symbols of two or more states, which are similar, it is sufficient to present authorisation from one of them (

text: Article 6

text: ter(8) PC).

text: Part B Examination Section 4 Absolute grounds for refusal

text: Article 7

text: ()(j) EUTMR

text: Article 7(1)

text: (j) EUTMR provides for the refusal of EUTMs that are excluded from registration pursuant to national or EU legislation or to international agreements to which the EU or Member State concerned is party, and that protect designations of origin and geographical indications. When defining the protection given to these specific designations, the relevant regulations refer simply to the protected/registered names, regardless of whether those names refer to a protected designation of origin (PDO) or a protected geographical indication (PGI). Moreover, the scope of protection does not rely on any distinction between PDOs and PGIs, as all protected names are given the same scope of protection. Therefore, this Chapter will refer to these protected names as geographical indications (GIs) without making any distinction between them. As regards EU legislation protecting GIs, the following EU regulations are currently in place:

text: Regulation (EU) 2024/1143

text: of the European Parliament and of the Council of

text: 11 April 2024 on geographical indications for wine, spirit drinks and agricultural products, as well as traditional specialities guaranteed and optional quality terms for agricultural products, amending Regulations

text: (EU) No 1308/2013

text: (EU) 2019/787

text: and

text: (EU) 2019/1753

text: and repealing

text: Regulation (EU) No 1151/2012

text: (later referred to as ‘

text: Regulation (EU) 2024/1143

text: ’) , which entered into force on 13 May 2024 and applies from that date .

text: Regulation (EU) 2023/2411

text: 18 October 2023 on the protection of geographical indications for craft and industrial products, amending Regulations

text: (EU) 2017/1001

text: and 2019/1753, (later referred to as ‘

text: Regulation (EU) 2023/2411

text: ’), which entered into force on 16 November 2023, and is fully applicable from 1 December 2025. As a consequence,

text: Article 7(1)

text: (j) EUTMR applies where GIs have been registered under the procedure laid down by these EU regulations. Importantly, GIs registered at EU level can originate from both EU Member States and non-EU countries.

text: Article 7(1)

text: (j) EUTMR also applies to EUTMs that are in conflict with non-EU GIs that are protected in the EU through international agreements to which the EU or the Member State concerned is a party (see paragraph 6.2 below). The Office interprets the ‘national legislation’ referred to in

text: Article 7(1)

text: (j) EUTMR as relating exclusively to national legislation providing for the protection of GIs in those areas where there is not a uniform and exclusive system of EU protection. With the adoption and full implementation of

text: Regulation (EU) 2023/2411

text: on the protection

text: of geographical indications for craft and industrial products, the EU system of GI protection overrides and replaces national protection of GIs in that area. From 1 December 2025 to 2 December 2026, Member States may notify to the Office and the Commission a request to register EU-level GIs based on their national legally protected names, or names established by usage, for craft and industrial products (

text: Article 70 (2) of Regulation (EU) 2023/2411

text: ). From the date that such a request is notified to the Office and the Commission, the EU-level GI will be the basis for objection under

text: Article 7(1)

text: (j) EUTMR, as that date constitutes the priority date, provided that the EU-level protection is granted. However, if the Office and the Commission are not informed on the same day, the priority date will be the latest date by which the application was submitted to both institutions. For more information about the recognition of existing/established GIs, see the Guidelines for examination of Geographical Indications for craft and industrial products, Part D GI Procedures, Section 5. As from 3 December 2026, pursuant to

text: Article 70 of Regulation (EU) 2023/2411

text: , existing national rights for GIs for craft and industrial products cease to exist and will not be considered for the application of

text: Article 7(1)

text: (j) EUTMR after that date. As regards international agreements concluded by Member States only, by analogy with the Office’s interpretation of

text: Article 7(1)

text: (j) EUTMR as far as national law is concerned, the Office considers that reference to an ‘international agreement to which the Member State concerned is party’ should be interpreted as referring to international agreements (including Geneva Act of the Lisbon Agreement, but not the Lisbon Agreement) in areas for which there is no uniform EU protection in place. Consequently, from 3 December 2026, these international agreements will not apply because, from that point on, there is uniform EU protection in place for craft and industrial products. (see paragraph 6.2 below).

text: 2 Geographical indications under EU regulations

text: ‘Protected designations of origin’ (‘PDO’), ‘protected geographical indications’ (‘PGI’) and ‘geographical indications’ (‘GI’) are defined according to the pertinent EU regulations . The distinction between the terms is that PDOs (used for agricultural products and wine only) indicate a closer link between the product and the relevant geographical area, in contrast to PGIs (used for craft, industrial and agricultural products and wine) and GIs (used for spirit drinks). This distinction does not affect the scope of protection, which is the same for both PDOs, PGIs and GIs. In other words,

text: Article 7(1)

text: (j) EUTMR applies equally to both designations covered by

text: Regulation (EU) 2024/1143

text: and

text: Regulation (EU) 2023/2411

text: , regardless of whether they are registered as PDOs, PGIs or GIs. The term GI is used hereinafter to cover PDOs, PGIs and GIs.

text: In this respect, it is important to emphasise that the concept of a GI – a name identifying a product with a specific link between its characteristics and its geographical origin – is different from a ‘mere geographical term’, which may simply indicate the geographical origin of a product. Firstly, not all GIs are geographical names. Secondly, only through registration can a name (geographical or otherwise) be protected as a GI under the relevant EU GI Regulations . Therefore, only GIs entered in the Union register of GIs meet the required criteria in accordance with the definitions set out above and fall within the regulatory scope of the relevant EU GI Regulation. (07/11/2000,

text: , Warsteiner, EU:C:2000:599, § 43-44; 08/05/2014,

text: , Assica and Krafts Foods Italia, EU:C:2014:306, § 30). For example, ‘Rioja’ was registered as a PDO for wines. It designates a wine with particular characteristics that comply with the definition of a PDO. However, wine produced in ‘Tabarca’ (a geographical term designating a small island close to Alicante) is not a GI. Similarly, ‘Queso Manchego’ was registered as a PDO for cheese, it designates a product with particular characteristics that comply with the definition of a PDO. However, ‘Queso de Alicante’ (which uses a type of product in combination with a geographical term) is not a GI. https://www.tmdn.org/giview/gi/search?databases=CRAFTWhether a term is a registered GI can be consulted in the Union register of GIs for wine, spirit drinks and agricultural products, or the Union register of GIs for craft and industrial products. Additional important information on protected GIs in the EU and beyond can also be found in GIview. EUTM applications consisting exclusively of geographical terms (such as MONACO or PARIS) or registered GIs (such as RIOJA or QUESO MANCHEGO) can, nonetheless, trigger objections based on

text: Article 7(1)

text: (c) EUTMR – see paragraph 7 of this Chapter. Protection is granted to GIs in order, inter alia, to protect the legitimate interests of consumers and producers. The specific objectives of protecting GIs are to ensure farmers and producers receive a fair return for the qualities and characteristics of a given product, or its production method, and to provide clear information on products with specific characteristics linked to geographical origin, thereby enabling consumers to make more informed purchasing choices (see

text: recital 19

text: of

text: Regulation (EU) 2024/1143

text: and

text: recital 15

text: of

text: Regulation (EU) 2023/2411

text: ). Moreover, their protection aims to ensure fair use and prevent practices liable to mislead consumers (see

text: recital 33

text: of

text: Regulation (EU) 2024/1143

text: and

text: recital 37

text: of

text: Regulation (EU) 2023/2411

text: 3 Relevant GIs under EU Regulations

text: Article 7(1)

text: (j) EUTMR in combination with the EU regulations applies where GIs (either from an EU Member State or from a non-EU country) have been registered under the procedure laid down by

text: Regulation (EU) 2024/1143

text: or

text: Regulation (EU) 2023/2411

text: . Relevant information about registered GIs can be found in the Union register of GIs for wine, spirit drinks and agricultural products (see

text: Article 22

text: in conjunction with

text: Article 93(1) of Regulation (EU) 2024/1143

text: ) and in the Union register of GIs for craft and industrial products (see

text: Article 37 of Regulation (EU) 2023/2411

text: ). Additional important information on protected GIs in the EU and beyond can be found in GIview. Protection is granted solely to the name of a GI as registered (

text: Article 26 of Regulation (EU) 2024/1143

text: and

text: Article 40 of Regulation (EU) 2023/2411

text: ) and does not extend

text: ipso iure to the names of subregions, subdenominations, local administrative

text: areas or localities in the area covered by that GI. Therefore, the Office does not object under

text: Article 7(1)

text: (j) EUTMR to trade marks consisting of, containing, imitating or evoking such geographical names, unless there is evidence that the use of said terms would evoke the GI or constitute a misleading indication. In this respect, and in particular as regards wines, a distinction must be made between the situation in judgment of the General Court of 11/05/2010,

text: , Cuvée Palomar, EU:T:2010:185, and the current legal framework. That judgment refers to a system of Member State competencies on the designation of geographical indications for wines that existed under previous

text: Regulation (EC) No 1493/1999

text: but is no longer in force. Under

text: Article 120(1)

text: (g) of

text: Regulation (EU) No 1308/2013

text: , the names of those smaller or larger geographical areas are now considered merely optional particulars on labels and would not serve as a basis for objecting an EUTM.

text: 3.1 Relevant point in time

text: Article 7(1)

text: (j) EUTMR applies only to GIs that were applied for before the EUTM application and are registered at the time the EUTM application is examined. A GI constitutes an earlier right in relation to a trade mark if the application date of the GI is earlier than the date of application of the EUTM (including the date of priority). An objection will be raised when the GI was applied for before the filing date (or the priority date, if applicable) of the EUTM application. Following the objection, if the GI is found to be ‘evoked’, the examination proceedings will be suspended until a final decision is reached on the GI registration. However, if the GI is found to be ‘used’, the EUTM applicant may choose either to overcome the objection by restricting the goods

text: and services to the GI product specification, or to have the examination proceedings suspended. Therefore, no objection will be raised under

text: Article 7(1)

text: (j) EUTMR if the GI was applied for after the filing date (or priority date, if applicable) of the EUTM application. Information relevant to establishing whether the GI constitutes an earlier right can be found in the Union registers of GIs or in GIview.

text: 4 Situations covered by the EU regulations and absolute grounds examination

text: Article 31(1) of Regulation (EU) 2024/1143

text: and

text: Article 44(1) of Regulation (EU) 2023/2411

text: govern the relationship between GIs and trade marks. These provisions stipulate that a later trade mark application must be refused if its use would contravene the scope of protection granted to GIs entered in the Union register under

text: Article 26 of Regulation (EU) 2024/1143

text: or

text: Article 40 of Regulation (EU) 2023/2411

text: . The General Court has confirmed in its judgment of 25/06/2025,

text: , NERO CHAMPAGNE / Champagne (GI), EU:T:2025:638, § 33-34, that the GI Regulations do not prohibit, as a matter of principle, a trade mark from containing or consisting of a GI (§ 31). It follows from a joint reading of Articles

text: and

text: of Regulation (EU) 2024/1143 or Articles

text: and

text: of Regulation (EU) 2023/2411, that those provisions preclude registration of a trade mark that contains or consists of a GI as such, where such registration falls within the scope of one of the situations expressly laid down in that respect (25/06/2025,

text: , NERO CHAMPAGNE / Champagne (GI), EU:T:2025:638, § 33-34).

text: Article 26(1) of Regulation (EU) 2024/1143

text: (GIs for wine, spirit drinks and agricultural products) refers to a graduated list of prohibited acts against which GIs are protected, namely: (a) any direct or indirect commercial use of the GI in respect of products not covered

text: by the registration, where those products are comparable to the products registered under that name or where use of that GI for any product or any service exploits, weakens, dilutes, or is detrimental to the reputation of, the protected name, including when those products are used as an ingredient; (b) any misuse, imitation or evocation, even if the true origin of the products

text: or services is indicated or if the protected name is translated, transcribed or transliterated or accompanied by an expression such as ‘style’, ‘type’, ‘method’, ‘as produced in’, ‘imitation’, ‘flavour’, ‘like’ or similar, including when those products are used as an ingredient; (c) and (d) any other false or misleading indication as to the provenance, origin,

text: nature or essential qualities of the product that is used on the inner or outer packaging, on advertising material, in documents or information provided on online interfaces relating to the product concerned, and the packing of the product in a

text: container liable to convey a false impression as to its origin;any other practice liable to mislead the consumer as to the true origin of the product.

text: Article 40(1) of Regulation (EU) 2023/2411

text: (GIs for craft and industrial products) contains a similar graduated list but with the following differences: subsection (a) does not have a reference to ‘any product or any service’ underlined

text: above but states that ‘where the use of the name exploits, weakens, dilutes, or is detrimental to the reputation of a GI’. Nevertheless, despite the slight wording difference, both provisions have the same scope and

text: is taken to also potentially apply to ‘any product or any service’ (see 25/06/2025,

text: , NERO CHAMPAGNE / Champagne (GI), § 50).

text: subsections (a) and (b) do not refer to ‘parts or components’ which would be the

text: equivalent of ‘ingredient’ under

text: . Although ‘parts or components’ are regulated separately under Article 41 of Regulation 2023/2411, it is in a manner that mirrors

text: Article 40

text: by ruling out use that would exploit, weaken, dilute, or be detrimental to, the reputation of the geographical indication and similar principles will apply as to ingredients. The ex officio examination covers all of the situations above. Exploitation, weakening, dilution or detriment to the reputation or evocation for non-comparable goods may, to varying degrees, already result from the information available to the Office. This may apply especially if the goods in question have relevant proximity to the product protected by the GI. It may be that these situations only become apparent following third-party observations that have been submitted providing concrete, substantiated and consistent information. Therefore, in these situations, the ex officio examination will, in principle, focus on the: goods identical to the product covered by the GI;

text: services for which the product covered by the GI is the specific object of that

text: service (e.g. retail, wholesale, import/export, provision of drink and food, production of [the product covered by the GI] for others); goods comparable to the product covered by the GI;

text: processed goods in which the product protected by the GI is an ingredient in the

text: case of wines, spirit drinks and agricultural products, or manufactured products in which the GI is a part or component, in the case of craft and industrial products. In light of the above provisions, the following cumulative conditions must be met for

text: Article 7(1)

text: (j) EUTMR, in combination with the EU regulations on GIs, to apply. 1. the GI in question (either from an EU Member State or from a non-EU country) must be protected at EU level (see paragraph 3); 2. use of the EUTM must constitute one of the situations provided for in

text: or Article 40(1) of Regulation 2023/2411 (see paragraphs 4.1 to 4.3).

text: 4.1 Use of a GI (direct or indirect use)

text: Article 26(1)

text: (a) of

text: Regulation (EU) 2024/1143

text: and

text: Article 40(1)

text: (a) of

text: Regulation (EU) 2023/2411

text: protect PDOs/PGIs against any direct or indirect commercial use in respect of comparable products. As a preliminary remark, ‘direct and indirect use’ need to be defined/interpreted. According to the Court (07/06/2018,

text: , SCOTCH WHISKY, EU:C:2018:415, § 32), direct and indirect use merely refer to the physical manner in which the use of a GI appears on the market: ‘direct use’ implies that the GI is affixed directly to the product or its packaging, while ‘indirect use’ requires the GI to feature in supplementary marketing or information sources, such as an advertisement for the product or documents relating to it. This distinction plays no role for the absolute grounds assessment, as the Office is not concerned with the subsequent placing on the market of the mark proposed for registration. For the purpose of finding whether or not there is use of a GI, the Office will assess whether an EUTM contains a GI as a whole or a term that could be considered phonetically and/or visually highly similar thereto. According to the Court: the word ‘use’ … requires, by definition, that the sign at issue make use of the protected geographical indication itself, in the form in which that indication was registered or, at least, in a form with such close links to it, in visual and/or phonetic terms, that the sign at issue clearly cannot be dissociated from it (07/06/2018,

text: , SCOTCH WHISKY, EU:C:2018:415, § 29; 09/09/2021,

text: , Champanillo, EU:C:2021:713, § 38). The Court has further emphasised that the concept of use must be interpreted in a strict manner so the concept of ‘evocation’ is not deprived of its usefulness, which would be contrary to the intention of the EU legislator (09/09/2021,

text: , Champanillo, EU:C:2021:713, § 40). If the GI name as registered is included in the trade mark, the assessment has to consider whether it is perceived as a separate and independent component (see table below) or not, due to its interaction with the other elements of the sign. The first scenario will be considered as use of the GI. However, in the second scenario, where there is interaction, there may be an evocation of the GI, unless it constitutes a separate, logical conceptual unit that diverges from the perception of the GI, in which case there will be no conflict. For example, the term ‘la Palma’ within the sign ‘Condesa de la Palma’ reproduces the GI ‘La Palma’ for wine. However, the meaning of the sign taken as whole, with the combination ‘Condesa de’ in relation to the products concerned (wine), does not constitute an independent component, but a playful combination of the GI name that retains the link with the registered GI. Therefore, this mark will be considered to evoke the GI ‘La Palma’ for wine. The following EUTMs are considered to fall under

text: Article 7(1)

text: (j) EUTMR since they make use of a GI.

text: Under

text: Article 7(1)

text: (j) EUTMR , it is irrelevant whether or not there are other word or figurative elements that may give the trade mark distinctive character. The sign can be acceptable as a whole under

text: Article 7(1)

text: (b) and (c) EUTMR and can still be objected to (as in the cases above) under

text: Article 7(1)

text: (j) EUTMR . If the mark consists solely of the GI, the EUTM also falls under

text: Article 7(1)

text: (c) EUTMR, since it is considered descriptive both of the geographical origin of the goods and of their quality. This means that the Office’s objection will simultaneously raise absolute grounds for refusal under both

text: Article 7(1)

text: (c) and (j) EUTMR . Where the mark contains the non-generic part of a compound GI (e.g. ‘TERUEL’ or ‘LA VERA’ from ‘JAMÓN DE TERUEL / PALETA DE TERUEL’ or ‘PIMENTÓN DE LA VERA’ (GI)), but omits the generic part (i.e. ‘PIMENTÓN DE …’), this is not considered to be ‘use’ of the GI. Restricting the relevant goods to a particular GI is usually a means of waiving the objection under

text: Article 7(1)

text: (j) EUTMR where the mark ‘uses’ the GI (seeparagraph 5), but is irrelevant for

text: Article 7(1)

text: (c) EUTMR . For example, an application for the word mark ‘Bergerac’ for wines will simultaneously be objected to under both

text: Article 7(1)

text: (c) and (j) EUTMR : it consists solely of the PDO ‘Bergerac’ and is therefore descriptive. If the goods are subsequently limited to ‘Bergerac’ (GI) wine, the objection under

text: Article 7(1)

text: (j) EUTMR could be waived but the trade mark will still be descriptive and it will be refused under

text: Article 7(1)

text: (c) EUTMR . In addition, there must be a logical separation of the GI from the rest of the term for it to be identifiable and liable to objection. In other words, a trade mark will not be liable to objection if it contains the GI as part of a word element, provided that the term has its own meaning. Examples where an objection should not be raised: TORONTO (it does not use the PDO ‘Toro’), EXCAVADORA (it does not use the PDO ‘Cava’), IMPORT (it does not use the PDO ‘Port’).

text: 4.1.1 Exploitation, weakening, dilution or detriment to the reputation of GIs

text: Article 26(1)

text: (a) of

text: Regulation (EU) 2024/1143

text: and

text: Article 40(1)

text: (a) of

text: Regulation (EU) 2023/2411

text: protect PDOs/PGIs against use for any product or service which exploits, weakens, dilutes or is detrimental to the reputation of the protected names. As a preliminary remark, contrary to the situation with trade marks, where reputation is quantitatively assessed, the reputation of a GI is linked intimately to the quality of the product that it designates. All registered GIs offer a guarantee of quality due to their geographical provenance. Therefore, the Office considers that GIs are intrinsically reputed within the meaning of

text: Article 26(1)

text: (a), 2nd part, of

text: Regulation (EU) 2024/1143

text: or

text: Article 40(1)

text: (a), 2nd part, of

text: Regulation (EU) 2023/2411

text: by the mere fact that they are registered. This is irrespective of whether a GI has been registered on the basis of a claim in the application that its reputation is essentially attributable to its geographical origin (

text: Articles 46(1)

text: (b) and 46(2)(b) of

text: Regulation (EU) 2024/1143

text: for agricultural products,

text: Article 93(1)

text: (b)(i) of

text: Regulation (EU) No 1308/2013

text: for wine,

text: for spirit drinks, and

text: Article 6(1)

text: (b) of

text: Regulation (EU) 2023/2411

text: for craft and industrial products). However, a GI may acquire notoriety beyond the intrinsic baseline reputation accorded to all GIs due to its long-standing presence on the market, marketing efforts and commercial success. This increases the potential for its exploitation, weakening, dilution or detriment. According to

text: Article 26(1)

text: (a) of

text: Regulation (EU) 2024/1143

text: and

text: Article 40(1)

text: (a) of

text: Regulation (EU) 2023/2411

text: , registered names are protected against use that exploits, weakens, dilutes, or is detrimental to the reputation of the protected name . This protection is intended to apply to all types of goods and services, including comparable products complying with the specification of the PDO in question (25/06/2025,

text: , NERO CHAMPAGNE / Champagne (GI), EU:T:2025:638, § 50). An objection regarding ‘use’ of a GI on non-comparable goods and services or products complying with the GI’s specifications forms part of the ex officio examination, but is more likely to be triggered where concrete, substantiated and consistent information is provided to the Office via third-party observations (or can be put forward in the context of an opposition based on

text: Article 8(6)

text: EUTMR) showing that such use exploits, weakens, dilutesor is detrimental to the reputation of the protected name (see the Guidelines, Part C, Opposition, Section 6, Geographical indications (

text: Article 8(6)

text: EUTMR).

text: 4.2 Misuse, imitation or evocation of a GI

text: Article 26(1)

text: (b) of

text: Regulation (EU) 2024/1143

text: and

text: Article 40(1)

text: (b) of

text: Regulation (EU) 2023/2411

text: protect PDOs/PGIs against any misuse, imitation or evocation.

text: 4.2.1 Misuse

text: In the absence of any guidance from the Court, the Office considers that an EUTM ‘misuses’ a GI when it provides false indications as to the geographical source of the goods, with the result that it benefits from the perceived quality of the GI. The Office understands the concept of ‘misuse’ as covering both misuse by the mere fact that an application is being filed and misuse due to use of the trade mark in trade. ‘Misuse’ due to use in trade is more difficult to establish in an absolute grounds for refusal examination. The Office’s examination is an ex parte assessment, which normally takes place before the applicant has actually used the trade mark. Therefore, in most cases, it would be difficult for the Office to establish that the trade mark actually ‘misuses’ the GI.

text: 4.2.2 Imitation/evocation

text: The mark ‘imitates’ (mimics, reproduces elements of, etc.), with the result that the product designated by the GI is ‘evoked’ (called to mind). The term ‘evocation’ requires less than ‘imitation’ or ‘misuse’ (Opinion of Advocate General, 17/12/1998,

text: , Cambozola, EU:C:1998:614, § 33). Nevertheless, the Office considers the terms ‘imitation’ and ‘evocation’ as two corollaries of essentially the same concept. ‘Evocation’ is objective. Its application does not require evidence that the owner of the mark intended to evoke the earlier GI or that any fault existed (Opinion of Advocate General, 17/12/1998,

text: , Cambozola, EU:C:1998:614, § 33; 09/09/2021,

text: , Champanillo / Champagne, EU:C:2021:713, § 68). According to the Court, the decisive criterion for finding ‘evocation’ is whether, ‘when the consumer is confronted with a disputed designation, the image

text: triggered directly in his mind is that of the product whose geographical

text: indication is protected’ (07/06/2018,

text: , SCOTCH WHISKY, EU:C:2018:415, § 51; 04/03/1999,

text: , Cambozola, EU:C:1999:115, § 25; 26/02/2008,

text: , Parmigiano Reggiano, EU:C:2008:117, § 44; 21/01/2016,

text: , Viiniverla, EU:C:2016:35, § 21). Consumers must establish a sufficiently clear and direct link between the term used to designate the product and the product whose name is protected (21/01/2016,

text: , Viiniverla, EU:C:2016:35, § 22; 07/06/2018,

text: , SCOTCH WHISKY, EU:C:2018:415, § 53; 09/09/2021,

text: , Champanillo / Champagne, EU:C:2021:713, § 59). At the same time, it is necessary to take account of the presumed expectation of the average consumer, who is reasonably well informed and reasonably observant and circumspect. In particular, it is not enough if the term incorporated in the trade mark application evokes in the relevant public some kind of association with the protected geographical indication or the area relating thereto, because such association does not necessarily establish a sufficiently clear and direct link between that element and the indication concerned (07/06/2018,

text: , SCOTCH WHISKY, EU:C:2018:415, § 53). Therefore, there may be no evocation even if the EUTM incorporates part of the GI or if a visual and aural similarity and conceptual proximity is established.

text: Importantly, EU regulations protect GIs throughout the territory of the European Union. As a result, the Court has ruled that the concept of the average European consumer must be interpreted in a way that guarantees effective and uniform protection of registered names against any evocation throughout the territory of the European Union (21/01/2016,

text: , Viiniverla, EU:C:2016:35, § 27; 07/06/2018,

text: , SCOTCH WHISKY, EU:C:2018:415, § 59; 09/09/2021,

text: , Champanillo / Champagne, EU:C:2021:713, § 63). It is also sufficient for evocation to be found solely by reference to the consumers of a single Member State for the protection provided for in

text: Article 26(1)

text: (b) of

text: Regulation (EU) 2024/1143

text: and

text: Article 40(1)

text: (b) of

text: Regulation (EU) 2023/2411

text: to be triggered (02/05/2019,

text: , queso manchego, EU:C:2019:344, § 48; 09/09/2021,

text: , Champanillo / Champagne, EU:C:2021:713, § 63). Taking the Viiniverla case as an example, the possible evocation of the GI ‘Calvados’ by a Finnish manufacturer of a cider spirit named Verlados has to be assessed on the basis of a number of criteria (see below) with respect to both European consumers and Finnish consumers. The fact that evocation is excluded for the national public does not exclude the fact that evocation may be found for a non-negligible number of European consumers. Likewise, in the ‘Scotch Whisky’ case, the Court of Justice held that the fact that the disputed designation referred to a place of manufacture that was known to consumers in the Member State where the product was manufactured was irrelevant for the purpose of assessing evocation, since GIs are protected throughout the territory of the European Union and all European consumers must be included in that exercise (07/06/2018,

text: , SCOTCH WHISKY, EU:C:2018:415, § 59). Furthermore, in the ‘Scotch Whisky’ case, the Court of Justice held that phonetic and visual similarity between the disputed designation and the GI is not an essential condition for establishing that there is an evocation; it is only one of the factors to be taken into account. Therefore, in the absence of any phonetic or visual similarity or partial incorporation of the GI in the trade mark applied for, the examination of evocation must take into account also any conceptual proximity between the GI and the disputed designation in the trade mark applied for. There may be evocation where the EUTM contains an element that is visually, aurally or conceptually similar to the protected GI. This extends to the figurative elements of a sign, as confirmed by the Court of Justice, should those elements trigger directly in the consumer’s mind the products whose names are registered (02/05/2019,

text: , Queso Manchego, EU:C:2019:344, § 22, 32). Third party observations may help/assist the Office in drawing attention to such cases. As indicated above, according to the Court (04/03/1999,

text: , Cambozola, EU:C:1999:115; 26/02/2008,

text: , Parmigiano Reggiano, EU:C:2008:117; 21/01/2016,

text: , Viiniverla, EU:C:2016:35, § 21, cited above), the EUTM must trigger in the consumer’s mind an image of the product whose designation is protected, in the sense that a link is established. The concept of ‘evocation’ does not require, as a prerequisite, that the product covered by the GI and the goods or services covered by the contested sign be identical or similar. What has to be found, through a global assessment of all the factors relevant to the case, is that the relevant public establishes a sufficiently clear and direct

text: link between the contested sign and the GI (09/09/2021,

text: , Champanillo / Champagne, EU:C:2021:713, § 66). Nevertheless, any objection regarding non-comparable goods and services forms part of the ex officio examination, but is more likely to be triggered in the context of

text: Article 7(1)

text: (j) EUTMR where concrete, substantiated and consistent information is provided to the Office via third-party observations insofar as it can be shown that the contested sign would take unfair advantage of the reputation of the protected name (09/09/2021,

text: , Champanillo / Champagne, EU:C:2021:713, § 50). For further information see the Guidelines, Part C, Opposition, Section 6, Geographical indications (

text: Article 8(6)

text: EUTMR). Importantly, evocation is not assessed in the same way as likelihood of confusion. Therefore, it is irrelevant whether a likelihood of confusion can be established or not in order to find that there is evocation of the GI. As the Court has held, there can be ‘evocation’ even in the absence of any likelihood of confusion (09/09/2021,

text: , Champanillo / Champagne, EU:C:2021:713, § 68 in fine). What matters, in particular, is that an association of ideas regarding the origin of the products is not created in the mind of the public, and that a trader does not take undue advantage of the reputation of the protected geographical indication (21/01/2016,

text: , Viiniverla, EU:C:2016:35, § 45). For evocation, a link must be made with the product whose designation is protected. Therefore, whether or not there is evocation will not be analysed according to the principles laid down by the Court in its judgment of 11/11/1997,

text: , Sabèl, EU:C:1997:528. In assessing whether a sufficiently clear and direct link exists, the Court has considered that global assessment requires the following factors to be considered. The partial incorporation of the GI within the sign (09/09/2021,

text: Champanillo / Champagne, EU:C:2021:713, § 55, 58, 66). Partial incorporation of the GI refers to: ○ where the mark contains the non-generic part of a compound GI (e.g. ‘Teruel’ or ‘La Vera’ from ‘Jamón de Teruel / Paleta de Teruel’ (GI) or ‘Pimentón de La Vera’ (GI)) but omits the generic part (‘Jamón de … / Paleta de …’ (GI) or ‘Pimentón de …’; ○ where the GI name (e.g. ‘Champagne’) or the non-generic part of a GI compound name (e.g. ‘Burgos’ in ‘Queso de Burgos’) is not reproduced as registered, but is clearly incorporated in the sign in a partial or altered form (e.g. ‘Champ’ or ‘Burg’). Whether there is a visual, phonetic or conceptual relationship between the terms

text: of the GI and the sign, and the kind of similarity that stems from it, e.g.: ○ the EUTM contains adjectives of the GI (e.g. IBIZENCO for of GI IBIZA); ○ the EUTM is similar to a component of the GI, which, despite being nongeographical per se, is exclusively associated to the geographical area of the GI (see e.g. 10/04/2025, R 1390/2024‑2, SUMARONE / Amarone della Valpolicella ; 10/06/2021, R 2885/2019‑2, Amicone / Amarone della Valpolicella et al.); ○ if the terms share a characteristic beginning, such as Parmesan / Parmigiano Reggiano (26/02/2008,

text: , Parmigiano Reggiano, EU:C:2008:117);

text: ○ if the terms share characteristic roots or endings that have no particular meaning, such as in Gorgonzola/Cambozola (04/03/1999,

text: , Cambozola, EU:C:1999:115) and Verlados/Calvados (21/01/2016,

text: , Viiniverla, EU:C:2016:35); ○ if the terms share the same number of letters or syllables, such as Gorgonzola/ Cambozola (04/03/1999,

text: , Cambozola, EU:C:1999:115); ○ where there is conceptual proximity, such as between Parmesan and Parmigiano Reggiano (26/02/2008,

text: , Parmigiano Reggiano, EU:C:2008:117, § 47); this includes situations where there is conceptual proximity but no visual or phonetic similarity (07/06/2018,

text: , SCOTCH WHISKY, EU:C:2018:415, § 56). The degree of proximity of the goods concerned (09/09/2021,

text: Champanillo / Champagne, EU:C:2021:713, § 66; 26/02/2025,

text: , Quevedo Port / Port, EU:T:2025:182, § 73-79), including the actual physical appearance (04/03/1999,

text: , Cambozola, EU:C:1999:115, § 27) or their ingredients and taste. ○ Similarly, the expression ‘M. MÜLLER — ECHTE BAYERISCHE QUALITÄT VON BODENSEE’ [M. Müller — Real Bavarian Quality from Lake Constance] for beef evokes the GI ‘Bayerisches Rindfleisch / Rindfleisch aus Bayern’ (beef from Bavaria). However, the Office considers that the same expression for poultry will not evoke the GI ‘Bayerisches Rindfleisch / Rindfleisch aus Bayern’. The Office considers that even if these are all ‘meat products’, when account is taken of the differences between beef and poultry and the fact that the GI ‘Bayerisches Rindfleisch / Rindfleisch aus Bayern’ is not fully reproduced in the trade mark, the relevant consumers will not establish a link between poultry meat marketed under the trade mark ‘M. MÜLLER — ECHTE BAYERISCHE QUALITÄT VON BODENSEE’ and beef protected by the designation ‘Bayerisches Rindfleisch / Rindfleisch aus Bayern’. Reputation of the protected name beyond the inherent reputation, and the

text: exploitation thereof. According to the Court, the concept of ‘evocation’ establishes a wide-ranging protection that is intended to extend to all uses which take unfair advantage of the reputation enjoyed by the GI through association with it. This extensive protection is consistent with the broad scope of protection afforded to GIs and contributes to its achievement (09/09/2021,

text: , Champanillo / Champagne, EU:C:2021:713, § 50 and Opinion of Advocate General, EU:C:2021:350, § 36, 37). The fact that the context surrounding the element under assessment is not to

text: be taken into account (07/06/2018,

text: , SCOTCH WHISKY, EU:C:2018:415, § 60). In particular, the fact that the EUTM contains indications of the true origin of the product or what are known as ‘delocalisers’ are not factors that will weigh against a finding of evocation (see paragraph 4.4 et seq.).

text: Examples of where evocation was found

text: Examples of where evocation was not found

text: 4.3 Other misleading indications and practices

text: Article 26(1)

text: (c) and (d) of

text: Regulation (EU) 2024/1143

text: and

text: Article 40(1)

text: (c) and (d) of

text: Regulation (EU) 2023/2411

text: protect PDOs/PGIs against a number of false or misleading indications about the origin, nature or essential qualities of products.

text: In the ‘Scotch Whisky’ judgment, the Court (07/06/2018,

text: , SCOTCH WHISKY, EU:C:2018:415, § 61-71) addressed the issue of misleading indications. There are two points to be considered:

text: an indication may be considered misleading if it includes information, inter alia, in

text: the form of words or an image, that is capable of providing information on the provenance, origin, nature or essential qualities of that product (§ 66); the context in which the possible misleading indication is used is not to be taken

text: into account (§ 63).

text: The Office would, therefore, have to establish whether or not an indication (an element in the trade mark) is ‘liable to convey a false impression as to [the product’s] origin’ (07/06/2018,

text: , SCOTCH WHISKY, EU:C:2018:415, § 66-67) or to the nature or essential qualities of the product (20/12/2017,

text: , Champagner Sorbet / Champagne, EU:C:2017:991, § 64).

text: In principle, the Office could consider a term or ‘indication’ in the representation of a mark applied for to be liable to convey a ‘false or misleading indication’ in relation to the goods and services if it gives the relevant public a false message regarding the origin, nature or any essential characteristics or qualities of the GI it refers to, when assessed

text: against the description contained in its product specification (25/06/2025,

text: , NERO CHAMPAGNE / Champagne (GI), EU:T:2025:638, § 82-84).

text: This prohibition of ‘misleading indication’, which results from the GI regulations and is implemented through

text: Article 7(1)

text: (j) EUTMR, is different from the prohibition of deceptive trade marks under

text: Article 7(1)

text: (g) EUTMR, which, for example, requires the existence of actual deceit or a sufficiently serious risk of deceit.

text: Examples where misleading indication was found

text: 4.4 Additional considerations

text: When applying

text: Article 7(1)

text: (j) EUTMR, the mere fact that the GI is used in translation or that there is a ‘delocaliser’ in the EUTM will be considered irrelevant. EU regulations

text: with respect to GIs clearly and explicitly refer to such ‘uses’ as prohibited. Where the applicant has its legal seat is likewise irrelevant for the purposes of applying

text: Article 7(1)

text: (j) EUTMR. Additionally, the argument that a GI is not known to the relevant public cannot succeed against an objection under

text: Article 7(1)

text: (j) EUTMR.

text: 4.4.1 Translations

text: The protection conferred on a GI applies ‘even if’ the protected indication is used in a translated form. It is therefore irrelevant whether or not the disputed name constitutes an exact translation of the protected GI (26/02/2008,

text: , Commission v Germany, EU:C:2008:117, § 47).

text: On the one hand, it follows that the fact that a disputed name contained in an EUTM is a translation of a protected GI cannot be raised as a valid defence by the applicant or proprietor. On the other hand, this implies that the Office will object to translations of GIs only to the extent that the translation amounts to misuse or evocation of a GI. Accordingly, no objection will be raised if the translation at issue does not trigger a sufficiently clear and direct link in the consumer’s mind with a product whose designation is protected. For instance, ‘TORO’ is a Spanish PDO for wines from the region of Toro but the Office will not object under

text: Article 7(1)

text: (j) EUTMR to the term ‘BULL’ just because it is the English equivalent to the Spanish word ‘TORO’. This is because the European consumer will always refer to the wine as TORO wine (it will never be ‘bull’ wine, even for English speakers). Once translated, the geographical reference and hence the link with the particular product is immediately lost as, in this particular case, the term ‘bull’ would not convey any link with the PDO ‘Toro’.

text: 4.4.2 Use of delocalisers

text: According to

text: Article 26(1)

text: (b) of

text: Regulation (EU) 2024/1143

text: and

text: Article 40(1)

text: (b) of

text: Regulation (EU) 2023/2411

text: , geographical indications (GIs) are protected even if the true origin of the products or services is indicated or if the protected name or GI

text: is accompanied by an expression such as ‘style’, ‘type’, ‘method’, ‘as produced in’, ‘imitation’, ‘flavour’, ‘fragrance’, ‘like’ or similar.

text: Therefore, the fact that the GI reproduced or evoked in the EUTM is accompanied by these expressions does not rule out the application of

text: Article 7(1)

text: (j) EUTMR.

text: In other words, even if the public is informed about the actual origin of the product, an objection will still be raised under

text: Article 7(1)

text: (j) EUTMR. Notwithstanding this, the trade mark will be misleading under

text: Article 7(1)

text: (g) EUTMR since there is a contradiction between the goods (restricted to the specific GI) and the message conveyed by the mark (that the goods are not ‘genuine’ GI products). This will lead to a further objection under that article.

text: 4.4.3 Identity of the applicant

text: The identity of the applicant, including its affiliation to or membership of an association or the location of its legal seat, is irrelevant for assessing

text: Article 7(1)

text: (j) EUTMR, because this ground must be evaluated independently of these circumstances (see Recital 26 EUTMR; by analogy, 19/12/2025, R 2248/2019‑G, GEORGE ORWELL, § 165).

text: 4.4.4 GIs not known to the public

text: Any contention that the protected GI reproduced in or evoked by the EUTM is unknown to the relevant public or has no reputation must be dismissed as irrelevant. This

text: is in particular because the reputation of a GI is not a condition for its protection (02/02/2017,

text: , TOSCORO, EU:T:2017:54, § 48). It has to be understood as absolute protection given to any registered GI name. The starting premise of the assessment under

text: Article 7(1)

text: (j) EUTMR is that every registered GI is, as a fact, known to the relevant public as a GI. This also stems, more fundamentally, from the essential function of a GI, which is to guarantee to consumers the geographical origin of the goods and the specific qualities inherent in them (29/03/2011,

text: P, Bud, EU:C:2011:189, § 147). For more on inherent reputation of a GI in terms of quality, see Paragraph 4.1.1 Exploitation, weakening, dilution or detriment to the reputation of GIs and the Guidelines, Part C, Opposition, Section 6, Geographical indications (

text: Article 8(6)

text: EUTMR). The Court has already confirmed that the system of registration for GIs ‘seeks to contribute […] not only to the prevention of deceptive practices and the attainment of market transparency and fair competition, but also to the attainment of a high level of consumer protection’. Therefore, what the Office will take into account is the presumed reaction/expectation of the average consumer, who is reasonably well informed and reasonably observant and circumspect (21/01/2016,

text: , Verlados, EU:C:2016:35, § 24-25).

text: 4.5 Limits to the scope of protection

text: 4.5.1 Elements of compound GIs that will not be afforded protection

text: In the case of GIs consisting of a compound designation, the protection afforded covers not only the compound designation as a whole, but also each of its constituent parts, provided they are not generic or common terms. Consequently, a trade mark will not be refused under

text: Article 7(1)

text: (j) EUTMR on the sole grounds that it contains a generic or a common term that forms part of a registered compound GI (

text: Article 26(7) of Regulation (EU) 2024/1143

text: or

text: Article 40(7) of Regulation (EU) 2023/2411

text: ; see judgments 09/06/1998,

text: , Époisses, EU:C:1998:274, § 37-38; 12/09/2007,

text: , GRANA BIRAGHI, EU:T:2007:255, § 58, 60; 04/12/2019,

text: , Aceto balsamico di Modena, EU:C:2019:1045, § 26, 28) . Both

text: Article 2

text: (h) of

text: Regulation (EU) 2024/1143

text: and

text: Article 4(6)

text: (a) of

text: Regulation (EU) 2023/2411

text: define a ‘generic’ term as a name of a product which, although relating to the place, region or country where the product was originally produced or placed on the market, has become the common name of a product in the Union.

text: Article 4(6)

text: (b) and (c) of

text: Regulation (EU) 2023/2411

text: respectively provide the following additional definitions of what is also considered a generic term for craft and industrial GIs: a common term in the Union which is descriptive of the type of product or of the

text: product attributes ;

text: a term that does not refer to a specific product .

text: As pointed out in the Opinion of Advocate General Hogan of 29/07/2019,

text: , Aceto Balsamico di Modena, EU:C:2019:650, § 24,31-34 , the expression ‘generic terms’ is used both to refer: 1. to names of products which, although relating to the place, region or country where the product was originally produced or marketed, have become the common name of a product in the Union (see 4.5.1.1); and 2. simply to common or usual words which are generic in character and, precisely because of their generic quality, do not qualify for registration as GIs (see 4.5.1.2).

text: 4.5.1.1 Generic terms

text: A GI could, over time and through use, become a generic name in the sense that consumers cease to regard it as an indication of the geographical origin of the product, and come to regard it only as an indication of a certain type of product (26/02/2008,

text: , Parmigiano Reggiano, EU:C:2008:117,§ 36). A term like this can be declared ‘generic’ by the legislator or the EU judicature.

text: Commission Regulation (EC) No 1107/96 of 12 June 1996

text: registered 318 agricultural products -including meats, cheeses, olive oils and fruit- as GIs (listed in Annex I). The Regulation also established, in Annex II, a list of names considered generic: Brie,

text: Camembert, Cheddar, Edam, Emmentaler and Gouda.

text: The generic nature of these terms has also been confirmed in:

text: Regulation (EC) No 1107/96

text: , footnotes to the PDOs ‘West Country farmhouse

text: Cheddar cheese’ and ‘Noord-Hollandse Gouda’ Commission Implementing Decision

text: (EU) 2025/107

text: of 23 January 2025 refusing

text: protection in the Union of the Appellation of Origin ‘Emmentaler’ registered in the International Register of Appellations of Origin and Geographical Indications of the Geneva Act, where the term ‘Emmentaler’ is considered generic as it identifies a product of the type ‘Cheese’. Judgment of the Court of Justice of 26/02/2008,

text: , Parmigiano Reggiano,

text: EU:C:2008:117, § 36, in relation to ‘Camembert’ and ‘Brie’ as part of a compound GI [‘Camembert de Normandie’ (PDO‑FR‑0112), ‘Brie de Meaux’ (PDO‑FR‑9110) and ‘Brie de Melun’ (PDO‑FR‑0111)]. A trade mark will not be refused under

text: Article 7(1)

text: (j) EUTMR if the part of the compound GI included in the trade mark is a generic term. Example of a generic term in an EUTM where no conflict was detected

text: 4.5.1.2 Common terms

text: ‘Common term’ could be understood as a word or expression that is widely known or frequently encountered and used in relation to a particular subject. In the GI context, this could refer to a term that is descriptive of the type of product or of the product attributes, but it could also simply refer to the common or usual words used as part of a compound GI that, although they do not describe any specific product, would not qualify for registration as GIs precisely because of their generic quality. Advocate General Hogan refers to ‘common words’ as ‘names that have always been generic’ (Opinion of Advocate General Hogan of 29/07/2019,

text: , Aceto Balsamico di Modena, EU:C:2019:650, § 32-33). A trade mark will not be refused under

text: Article 7(1)

text: (j) EUTMR if the part of the compound GI included in the trade mark is a common term. For example, the EUTM ‘Maçã de Anna’ applied for for fruit will not be considered to be in conflict with the ‘Maçã de Alcobaça’ (GI) for apples (‘maçã’ is the Portuguese word for apple). The mere fact of referring to a specific type of product ‘apple’ in the trade mark will not suffice to create a link with this GI.

text: Examples of ‘common terms’ within compound GIs

text: Where the descriptiveness or generic quality of an element in a GI can be determined by standard dictionary definitions, the perspective of the public in the GI's country of origin is determinative. For instance, it suffices that the term ‘maçã’ will be perceived by Portuguese-speaking consumers as denoting a fruit for it to be concluded that it is descriptive, regardless of whether it can be understood by other parts of the public in the European Union. By contrast, where no definition can be found in a standard, well-known dictionary, the descriptive nature of the term in question should be assessed following the criteria laid down by the Court, such as relevant national and EU legislation, how the term is perceived by the public and circumstances relating to the marketing of the product in question (26/02/2008,

text: , Parmigiano Reggiano, EU:C:2008:117; 12/09/2007,

text: , GRANA BIRAGHI, EU:T:2007:255).

text: 4.5.2 Logical and conceptual unit

text: Objections should not be raised because of the mere presence of a GI in a trade mark application, provided that the mark as a whole – namely, the way in which the GI name interacts with the other elements of the sign – forms a logical and conceptual unit, the meaning of which, in relation to the products concerned, neither evokes nor imitates the earlier GI. Even the Court has confirmed that ‘possible information capable of indicating that the visual and phonetic relationship between the two names is not fortuitous’ should be taken into account (21/01/2016,

text: , Verlados, ECLI:EU:C:2016:35, § 39-40). Therefore, similarity between terms may have occurred by chance as use of a term may be justified linguistically, irrespective of its similarity to the registered GI. For example, words in different languages may have a similar visual or phonetic appearance, but nothing more in common due to their inherent meaning. When assessing the possible evocation of a GI within an EUTM, the fact that some GIs may have an inherent meaning distinct from the reference to a geographical place will be taken into account. On the basis of the criteria mentioned above, a GI that coincides with surnames or family names is, when used in combination with other elements, unlikely to remind the relevant consumer of the product protected under the relevant GI. Again, objections should not automatically be raised just because of the presence of a GI term in the

text: trade mark. For instance, the term ‘Leon’ is included in the PDO ‘Tierra de León’ and the PGI ‘Castilla y León’, both for wines. However, in combination with a first name, it is more likely to be perceived as a family name rather than an indication of geographical origin (25/04/2012, R 2274/2011‑4, MICHEL LEON). The term ‘Lorenzo’ is included in the PDO ‘Castel San Lorenzo’ for wines. However, in combination with other elements, it is more likely to be perceived as a first name rather than an indication of geographical origin. See EUTM No 14 095 228 Organic Casa Lorenzo (fig.). The assessment is to take into account the perception of the relevant public when it comes to logical and conceptual units that should not be artificially dissected. In a case concerning a conflict between the trade mark application PORT CHARLOTTE for whisky and the earlier PDO ‘Porto / Port / vinho do Porto / Port Wine / vin de Porto / Oporto / Portvin / Portwein / Portwijn’, the General Court, in a judgment confirmed by the Court of Justice, held that the sign PORT CHARLOTTE, read as a whole as a logical and conceptual unit, would be understood by the relevant public as designating a harbour named after a person called Charlotte, with no direct link being made with the PDO ‘Porto / Port / vinho do Porto / Port Wine / vin de Porto / Oporto / Portvin / Portwein / Portwijn’. Even though the term ‘port’ forms an integral part of the contested mark, the average consumer, even if he or she is of Portuguese origin or speaks Portuguese, will not, on encountering a whisky bearing that mark, associate it with a port wine covered by the designation of origin in question (18/11/2015,

text: , PORT CHARLOTTE, EU:T:2015:863, § 71; 14/09/2017,

text: P, PORT CHARLOTTE, EU:C:2017:693, § 124). The ‘logical and conceptual unit’ approach will lead to no objection, and in some cases, the goods applied for may play a decisive role. See examples below.

text: 4.6 Trade marks in conflict with two or more GIs

text: In some cases an EUTM application may constitute use or evocation of more than one GI at the same time.

text: In these cases, an objection should be raised for all the GIs. Objections for evocation cannot be overcome by limiting the goods or related services to the GI evoked. Objections based on use, however, may be overcome by such limitations depending on whether it is possible to apply limitations in a manner that is compatible with the goods and related services, and geographical areas covered by the respective GIs as shown in the examples below.

text: Examples of clearly distinct geographical areas

text: Examples of overlapping geographical areas

text: Examples of same geographical area

text: Examples of the same geographical area – names refer to different areas within a

text: greater region

text: 5 Relevant Goods and Services under EU Regulations

text: The ex officio examination covers all of the situations within the GI scope of protection (

text: and

text: ). Exploitation, weakening, dilution, detriment to the reputation or evocation for non-comparable goods may, to varying degrees, result already from the information available to the Office. This may apply especially if the goods in question have relevant proximity to the product protected by the GI. It may be that those situations become apparent only following third-party observations that have been submitted providing concrete, substantiated and consistent information. Therefore, in those situations, the ex officio examination focuses, in principle, on: goods identical to the product covered by the GI;

text: processed goods in which the product covered by the GI is an ingredient, in the

text: case of wines, spirit drinks and agricultural products, or manufactured products in which the GI is a part or component, in the case of craft and industrial products. The product covered by the GI is the one described in the single document, which can be accessed through the Union register of GIs for wine, spirit drinks and agricultural products, the Union register of GIs for craft and industrial products and the GIview database.

text: 5.1 Identical goods to those covered by the GI and related services

text: 5.1.1 Goods identical to the GI product

text: Identical goods to the product covered by the GI are solely those that comply with the GI product specification. These identical goods can be included within broader specifications of the goods and services in the trade mark application. To determine whether the goods specified in a trade mark application include the product covered by the GI, the assessment must take into account the products within the specific sector of the GI in question and their corresponding classification under the Nice Classification.

text: Wine, spirit drinks and agricultural products

text: If the GI relates to any of the above sectors, a product covered by the GI might fall within the following classes. 1. Any category of grapevine products listed in Part II, Annex VII of

text: Regulation (EU) No 1308/2013

text: (e.g. wine, liqueur wine, sparkling wine, grape must, etc.) falls under Class 33. However, there is an exception, wine vinegar, that falls under Class 30. 2. Any category of spirit drinks, listed in Annex I of

text: Regulation (EU) 2019/787

text: (e.g. rum, whisky, grain spirit, wine spirit, brandy, weinbrand, etc.) falls under Class 33. 3. Any category of agricultural products including foodstuffs and fishery and aquaculture products, listed in Annex III of

text: Regulation (EU) 2024/1143

text: falls mostly in Classes 29, 30, 31 and 32. However, there are a number of exceptions that are classified under other classes. For example: a. Class 3: essential oils (e.g. PDO ‘Bergamotto di Reggio Calabria - Olio essenziale’); b. Class 22: wool (e.g. PDO ‘Native Shetland Wool’); c. Class 31: flowers and ornamental plants (e.g. PGI ‘Vlaamse laurier’) or hay (e.g. PDO ‘Foin de Crau’); d. Class 33: aromatised wine (e.g. PDI ‘Samoborski bermet’).

text: Craft and industrial products

text: For GIs related to the above sector, it is not possible to identify specific Nice classes that could contain products covered by a GI. This is due to the broad definition of craft and industrial GI products: 1. craft products are those produced either entirely by hand or with the aid of manual or digital tools, or by mechanical means, whenever the manual contribution is an important component of the finished product (see categorisation in the Guidelines for examination of geographical indications for craft and industrial products); 2. industrial products are those produced in a standardised way, including serial production and by using machines (see categorisation in the Guidelines for examination of geographical indications for craft and industrial products).

text: 5.1.2 Services where the GI product is the object

text: Goods object of the applied services that conform to the GI specification are considered identical to the product covered by the GI. To determine whether the product covered by the GI constitutes the specific object of services specified in a trade mark application – such as retail, wholesale, import/export, provision of drink and food, production of [the product covered by the GI] for others – the assessment must take into account services in Classes 35, 39, 40, 41 and 43; and the product categories of the GI sectors outlined in paragraph 5.1.1. For example, if an EUTM includes the PDO ‘Slavonski med’ (‘med’=‘honey’) and seeks protection for goods in Class 30 – (honey) and also for services in Class 35 – (retail services relating to honey) ‘honey’ constitutes the particular object of the retail services applied for.

text: 5.2 Comparable goods

text: By definition, comparable goods to the product covered by the GI cannot comply with the product specification of the GI in question (26/02/2025,

text: , PORTSOY / Port, EU:T:2025:183, § 72). To determine whether the goods specified in a trade mark application are comparable to the product covered by a GI, the assessment focuses on whether those goods, following a global assessment, satisfy the non-exhaustive criteria established by EU case-law. The notion of comparable products must be understood as independent from the similarity between goods under

text: Article 8

text: EUTMR. Accordingly, the criteria set out in the judgment of 29/09/1998,

text: , Canon, EU:C:1998:442, should not necessarily be adhered to, although some of them may be useful. For example, given that a GI serves to indicate the geographical origin and the particular qualities of a product, criteria such as the nature of the product or its composition are more relevant than, for instance, whether or not goods are complementary. The CJEU (14/07/2011,

text: , Cognac, EU:C:2011:484, § 54) has developed certain criteria for determining whether goods not covered by a given GI are comparable to the product for which the GI is protected. In particular, it considers whether the products have common objective characteristics and whether they are consumed, from the point of view of the relevant public, on largely identical occasions. It also takes into account whether the products are frequently distributed through the same channels and subject to similar marketing rules. Applying the above criteria to the particular comparison between ‘Cognac’ (GI) wine spirit and other spirit drinks, the Court of Justice further found that, regardless of their various categories, spirit drinks not covered by the ‘Cognac’ (GI) may be regarded as comparable to it. Accordingly, spirit drinks are comparable with one another.

text: Later jurisprudence has further developed on the criteria to be taken into account in a global assessment, including, among others:

text: method of production;

text: ingredients;

text: alcohol content;

text: taste;

text: physical appearance;

text: protection under different GI regulations.

text: When applying the above criteria, the General Court found that the goods under comparison in the PORTSOY judgment – ‘Porto’ (GI) wine v whiskey – are not comparable due to differences in their objective characteristics, of which the average

text: consumer is well aware .

text: In the Quevedo Port judgment, the General Court concluded that ‘Porto’ (GI) wine v olive oil are not comparable due to significant differences between their respective features, of which the average consumer is well aware, irrespective of whether he or

text: she is familiar with Mediterranean cuisine .

text: The following are some examples of comparable products.

text: 5.3 Processed or manufactured goods in which the GI product is an ingredient, part or component

text: Processed or manufactured goods in which the GI product is an ingredient, part or component are not themselves the product covered by the GI and, therefore, cannot comply with the product specification of the GI in question.

text: To determine whether the processed or manufactured goods specified in a trade mark application are actually using the GI product, the assessment must focus on whether, according to the product categories of the GI sectors outlined in paragraph 5.1.1, the GI product can be identified as an ingredient, part or component of those goods.

text: For example, if an EUTM includes the PDO ‘Rum da Madeira’ and seeks protection for goods in Class 30 – ice cream; or if it includes in the sign the PDO ‘Queso Manchego’ and seeks protection for goods in Class 30 – cheesecake, it can be established that these processed goods can incorporate the rum or cheese covered by the respective GIs.

text: The following are some examples of processed goods in which the GI product is an ingredient:

text: 5.4 Restriction of the list of goods and related services

text: 5.4.1 Presumption arising from the restriction of the goods and services

text: The system of protection of GIs is essentially intended to assure consumers that products bearing a registered name have, because of their provenance from a particular geographical area, certain specific characteristics and, accordingly, offer a guarantee of quality due to their geographical provenance. Therefore, it can be presumed that a trade mark that contains or consists of a GI, registered solely in respect of products complying with the specification of the GI or for related services, will not unduly exploit the reputation of that GI within the meaning of

text: Article 26(1)

text: (a), 2nd part, of

text: Regulation (EU) 2024/1143

text: or

text: Article 40(1)

text: (a), 2nd part, of

text: Regulation (EU) 2023/2411

text: , since it will only be deemed to be used on the market, in respect of products complying with the quality standards relating to that GI or in respect of services relating to such products. Therefore, the objective of protecting the quality of goods covered by a GI pursued by

text: Regulation (EU) 2024/1143

text: or

text: Regulation (EU) 2023/2411

text: is presumed to be fulfilled in that situation (see 25/06/2025,

text: , NERO CHAMPAGNE / Champagne (GI), EU:T:2025:638, § 57-58). Therefore, objections raised by the Office under

text: Article 7(1)

text: (j) EUTMR and

text: Article 26(1)

text: (a) of

text: Regulation (EU) 2024/1143

text: or

text: Article 40 (1)

text: (a) of

text: Regulation (EU) 2023/2411

text: may be waived if the list of goods and services is restricted to identical goods complying with the specification of the relevant GI and/or to services referring to such products. In the other situations where a restriction of the list of goods and services is not possible, the objection will be maintained (see table below).

text: The General Court has clarified that such a presumption, however, may be overturned when it can be demonstrated, on the basis of concrete, substantiated and consistent elements, that a given trade mark is likely to unduly exploit the reputation of a GI, even if it only covers products complying with the specification of that GI or related services. Therefore, when such elements are brought to the attention of the adjudicating bodies of the EUIPO, those bodies must examine them to ascertain whether they allow that presumption to be rebutted (25/06/2025,

text: , NERO CHAMPAGNE / Champagne (GI), EU:T:2025:638, § 59).

text: Moreover, the mere fact that a mark containing a GI restricts its registration to products complying with the specification and to services relating to such products does not in itself preclude the existence of one of the prohibited conducts provided for in

text: Article 26(1)

text: (a), 2nd part, and (b) to (d) of

text: Regulation (EU) 2024/1143

text: or

text: Article 40(1)

text: (a), 2nd part, and (b) to (d) of

text: Regulation (EU) 2023/241

text: (see, 25/06/2025,

text: , NERO CHAMPAGNE / Champagne (GI), EU:T:2025:638, § 51). For further information, please see ‘ex officio examination’ in paragraph 4 Situations covered by the EU regulations and absolute grounds examination; and the Guidelines, Part C, Opposition, Section 6, Geographical indications (

text: Article 8(6)

text: EUTMR).

text: 5.4.2 Restriction of the list of goods and services

text: The waiver of objections raised by the Office under

text: Article 7(1)

text: (j) EUTMR and

text: Article 26(1)

text: (a) of

text: Regulation (EU) 2024/1143

text: or

text: Article 40(1)

text: (a) of

text: Regulation (EU) 2023/2411

text: is conditional upon the specification of the list of the goods and services of the trade mark application being restricted to identical goods; i.e. goods that comply with the product specification of the relevant GI and/or to services relating to such products.

text: Identical goods or related services that could comply with the GI product specification, must be restricted to goods complying with the GI product specification by citing the GI name and the product it covers as shown below where the wording recommended by the Office is: ‘[GI name]’ (GI) [product type covered by the GI as shown in GIview]’. Alternative formulations of the restriction are, however, acceptable, as long as the applicant clearly identifies the GI and the use thereof.

text: Examples:

text: 6 GIs not Protected under EU Regulations

text: 6.1 GIs protected at national level in an EU Member State

text: The EU system of GI protection overrides and replaces the national protection of GIs for agricultural products, wine and spirit drinks. In light of the foregoing, wine, spirits and agricultural products that now qualify for a GI under EU regulations, and previously enjoyed protection under national legislation, do not fall within the scope of

text: Article 7(1)

text: (j) EUTMR. Accordingly, they do not constitute, as such, and for that reason alone, a ground for refusal under

text: Article 7(1)

text: (j) EUTMR, unless they have also been registered at EU level. Therefore, if, for example, a third party claims that an EUTM application contains or consists of a geographical indication for wines that was registered in the past at national level in an EU Member State, the examiner will check whether the geographical indication was also registered at EU level as a GI. If not, the third-party observations will be deemed not to raise serious doubts under

text: Article 7(1)

text: (j) EUTMR. As indicated in paragraph 1, the existing national rights for GIs for craft and industrial products are no longer valid as of 3 December 2026 (

text: Article 70(1) of Regulation (EU) 2023/2411

text: ). Those GIs are protected by the national law of Member States and are therefore considered for the application of

text: Article 7(1)

text: (j) EUTMR, as explained in these Guidelines, only before that date.

text: 6.2 GIs from non-EU countries

text: The following situations refer to GIs from non-EU countries that are not simultaneously registered at EU level. If a non-EU GI is registered at EU level, paragraphs 4 and 5 of this section of the Guidelines apply (e.g. 'Café de Colombia', 'Ron de Guatemala').

text: 6.2.1 GI is protected only in the non-EU country of origin under its national legislation

text: Article 7(1)

text: (j) EUTMR does not apply since the non-EU GI is not recognised and protected expressis verbis under EU legislation. In this respect, note that the provisions of the TRIPs Agreement are not such as to create rights upon which individuals may rely directly before the courts by virtue of EU law (14/12/2000,

text: , Dior and Others, EU:C:2000:688, § 44). Example: ‘Miel Blanc d’Oku’ from Cameroon. For non-EU GIs protected in a Member State by virtue of an international agreement signed by that Member State (and not the EU), see below for more details. Nevertheless, when the EUTM application contains or consists of one such protected GI, it must also be assessed whether the EUTM may be considered descriptive and/or deceptive under

text: Article 7(1)

text: (c) and (g) EUTMR in accordance with the general rules set out in these Guidelines. For example, where a third party observes that an EUTM application consists of the term ‘Murakami’ (invented example), which is a GI for spirits in accordance with the national legislation of country X,

text: Article 7(1)

text: (j) EUTMR will not apply for the reasons set out above, but it must be examined whether or not the EUTM will be perceived as a descriptive and/or deceptive sign by the relevant EU consumers.

text: 6.2.2 GI is protected under an agreement to which the EU is a contracting party

text: The EU has signed a number of trade agreements with non-EU countries to protect GIs. These instruments typically include a list of the GIs, as well as provisions on their conflicts with trade marks. The content and degree of precision may nevertheless vary from one agreement to another. GIs from non-EU countries are protected at EU level after the relevant agreement has entered into force. In this respect, it is settled case-law that a provision of an agreement entered into by the EU with non-EU countries must be regarded as being directly applicable when, in view of the wording, purpose and nature of the agreement, it may be concluded that the provision contains a clear, precise and unconditional obligation that is

text: not subject, in its implementation or effects, to the adoption of any subsequent

text: measure (14/12/2000,

text: , Dior and Others, EU:C:2000:688, § 42). The scope of protection given to these GIs by non-EU countries is defined through the substantive provisions of the agreement concerned, which may, for instance, include specific requirements or authorisation for use of the protected term. While the oldest agreements usually contained only general provisions, the ‘latest generation’ of freetrade agreements refer to the relationship between trade marks and GIs in similar terms to

text: Article 26

text: and

text: Article 31(1)

text: , (2) and (3) of

text: Regulation (EU) No 2024/1143

text: (see, for example, Articles 210 and 211 of the ‘Trade Agreement between the European Union and its Member States, of the one part, and Colombia and Peru, of the other part’, OJ L 354, 21/12/2012).

text: In the light of this, EUTMs that contain or consist of a non-EU GI that is protected by an agreement to which the EU is a contracting party (and that is not simultaneously registered under the EU regulations) are examined on a case-by-case basis in accordance with the specific substantive provisions of the agreement in question on the refusal of conflicting trade marks, taking into account the case-law cited above. Nevertheless, the mere fact that a GI from a non-EU country is protected by those instruments does not automatically imply that an EUTM that evokes or even contains or consists of the GI must be refused: this will depend on the content and scope of the agreement’s relevant provisions. Apart from applying

text: Article 7(1)

text: (j) EUTMR to the extent provided under each of the agreements, if, in the course of the proceedings and in particular in light of third-party observations, it becomes evident that the trade mark would deceive the public, for example as regards its origin or the right to use the GI, the Office will also consider raising an objection based on

text: Article 7(1)

text: (g) EUTMR. As regards the relevant point in time for the protection of such GIs, a case-by-case approach is necessary. GIs included in the initial agreement are normally protected as of the date when the agreement enters into force. However, the list of protected GIs can subsequently be updated in the ‘second-generation agreements’. In these cases, the relevant priority date varies from agreement to agreement: in some cases, the priority date may be the date of the request by the non-EU country to update the list and not the date when the Commission accepts the inclusion of the GIs. GIview displays information on, inter alia, third-country GIs protected at the EU level through bilateral and multilateral agreements. The trade agreements signed by the EU with non-EU countries typically have annexed to them a list of the GIs registered at EU level that are also to be protected in the non-EU countries in question (11/05/2010,

text: , Cuvée Palomar, EU:T:2010:185, § 104-108; 19/06/2013, R 1546/2011‑4, FONT DE LA FIGUERA). Examples:

text: 6.2.3 GI is protected under the Lisbon System (Geneva Act)

text: The EU became a contracting party to the Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications (the ‘Geneva Act’) pursuant to

text: Council Decision (EU) 2019/1754

text: ( ). As from the date of entry into force of the Geneva Act (26 February 2020), GIs from non-EU countries protected under the Lisbon System will form the basis for objections pursuant to

text: Article 7(1)

text: (j) EUTMR. In order to lay down the rules allowing the EU to exercise these rights and to fulfil the obligations laid down in the Geneva Act, the European Parliament and the Council adopted

text: Regulation (EU) 2019/1753

text: on the EUʼs action following its accession to the Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications (

text: Regulation (EU) 2019/1753

text: )( ). Certain provisions of that Regulation have been amended by

text: Regulation (EU) 2023/2411

text: to ensure consistency in relation to the establishment of a Union system for the protection of GIs for craft and industrial products.

text: Relevant GIs under the Lisbon System

text: that refer to products protected at European Union level (i.e. wine, spirit drinks,

text: agricultural products and craft and industrial products); that have been registered in the International Register; and

text: that have been granted protection in the European Union through Regulation

text: (EU) 2019/1753

text: Relevant point in time

text: Applications for the international registration of GIs are filed with the International Bureau of WIPO. The International Bureau publishes the international registration in the WIPO Bulletin and notifies it to the Commission or, in respect of geographical indications for craft and industrial products, to the Office (Articles 5 and 6 of the Geneva Act). The Commission or the Office then publishes it (

text: Article 4(1)

text: and (2) of

text: Regulation (EU) 2019/1753

text: ) and assesses it (

text: Article 5 of Regulation (EU) 2019/1753

text: ). The GI application can be opposed by third parties within 4 months from the date of its publication in the Official Journal of the European Union (

text: Article 6 of Regulation (EU) 2019/1753

text: ). The procedure ends with a decision of the Commission or the Office on the protection in the EU of the third-country GI (

text: Article 7 of Regulation (EU) 2019/1753

text: In principle, the relevant dates for establishing which right is the earliest are the filing date of the EUTM application (or its priority date under the Paris Convention, if claimed) and the date on which the application for the international registration of the GI was received by the International Bureau. However,

text: Article 10(3) of Regulation (EU) 2019/1753

text: allows for the coexistence of a protected GI and a trade mark that has been applied for or registered in good faith within the European Union before the date on which the International Bureau notified the Commission or the Office of the international registration of the GI. In other words, a trade mark application filed in good faith after the date when the application for international registration was received by the International Bureau (GI application) but before notification of the publication of the registration to the Commission or to the Office (notification to the Commission or the Office) is not objectionable as the trade mark can coexist with the GI. In the absence of any evidence or indication to the contrary (e.g. via third-party observations or in inter partes proceedings), the Office will assume good faith on the part of the trade mark applicant/ proprietor. As a result: in ex officio examination, unless there are indications of lack of good faith (e.g.

text: through third-party observations), the relevant date is the date of notification of the international registration to the Commission or to the Office, and the Office will object only to the registration of trade marks filed after that date; an opposition against a trade mark filed after the GI application to the International

text: Bureau but before notification of the international registration to the Commission or to the Office can only be successful if a lack of good faith in filing the trade mark application is proven by the opponent; in cancellation proceedings, registered trade marks applied for after the GI

text: application to the International Bureau but before notification to the Commission or to the Office cannot be invalidated unless the invalidity applicant proves a lack of good faith at the time of filing the trade mark. Objections can be based on GIs already notified to the Commission or to the Office but for which the Commission or the Office has not taken a decision on protection. If the EUTM applicant does not submit observations or does not overcome the objection, the Office will suspend the examination proceedings until the Commission or the Office has taken a decision or until 1 year has elapsed without a refusal since receipt from the International Bureau of notification of the international registration (Article 7(4)

text: Regulation (EU) 2019/1753

text: Scope of protection of GIs under the Geneva Act

text: Under Article 11(1) of the Geneva Act, protection exists against: 1. use of the appellation of origin or the geographical indication: a. in respect of goods of the same kind as those to which the appellation of origin or the geographical indication applies, not originating in the geographical area

text: of origin or not complying with any other applicable requirements for using the appellation of origin or the geographical indication; b. in respect of goods that are not of the same kind as those to which the appellation of origin or geographical indication applies or services, if such use would indicate or suggest a connection between those goods or services and the beneficiaries of the appellation of origin or the geographical indication, and would be likely to damage their interests, or, where applicable, because of the reputation of the appellation of origin or geographical indication in the Contracting Party concerned, such use would be likely to impair or dilute in an unfair manner, or take unfair advantage of that reputation; 2. any other practice liable to mislead consumers as to the true origin, provenance or nature of the goods. According to Article 11(3) of the Geneva Act, a Contracting Party must, ex officio if its legislation so permits, or at the request of an interested party, refuse or invalidate the registration of a later trade mark if use of the trade mark would result in one of the situations covered by paragraph (1). Consequently, the legal provisions on which the Office will base its objections will be those of

text: Article 11(1)

text: and (3) of the Geneva Act in conjunction with

text: Regulation (EU) 2019/1753

text: . The Office considers that although Article 11(1) of the Geneva Act is worded differently from the respective articles of the EU Regulations relating to protection of GIs, the substantive protection granted to GIs under the Geneva Act is the same: that is to say, those GIs are protected against direct and indirect use of the GI for the same or comparable products (see paragraph 4.1), direct or indirect use that would exploit the reputation of the GI (see paragraph 4.1.1), any misuse, imitation or evocation (see paragraph 4.2), and any other misleading indications and practices (see paragraph 4.3). The Office will therefore apply the same standard to GIs protected under the Geneva Act and will examine potential conflict with earlier GIs, bearing in mind, mutatis mutandis, the rules mentioned above in paragraph 4 Situations Covered by the EU Regulations and Absolute Grounds Examination. In addition, the Office considers that the notion of ‘goods that are not of the same kind’ is analogous to the notion of ‘non-comparable goods’ under the EU Regulations providing for the protection of GIs. See paragraph 5.2. In practice, this means that in ex officio examination,

text: Article 11(1)

text: (a)(i) of the Geneva Act will be invoked and will apply in situations corresponding to ‘use’ of the GI for the same and comparable products;

text: Article 11(1)

text: (b), which provides for protection against ‘any other practice liable to mislead consumers as to the true origin, provenance or nature of the goods’, will be invoked in all the other situations provided for in the EU Regulations: that is to say misuse, imitation, evocation and other misleading indications and practices. However, the Office will not invoke, in ex officio examination,

text: Article 11(1)

text: (a)(ii) of the Geneva Act, which refers to the use of GIs in respect of goods or services that are not

text: of the same kind as those to which the appellation of origin or geographical indication applies (i.e. non-comparable goods and services). The Office cannot take an ex officio decision regarding situations described in that article in the absence of arguments and evidence from the beneficiary of the GI.

text: Article 11(1)

text: (a)(ii) of the Geneva Act can, however, be relied on in third-party observations and in oppositions pursuant to

text: Article 8(6)

text: EUTMR (see the Guidelines, Part C, Opposition, Section 6, Geographical indications (

text: Article 8(6)

text: EUTMR).

text: 6.2.4 GI is protected under an international agreement signed only by Member States (i.e. the EU is not a party)

text: Article 7(1)

text: (j) EUTMR applies to GIs protected by international agreements to which a Member State is a party. However, by analogy with the Office’s interpretation of

text: Article 7(1)

text: (j) EUTMR as far as national law is concerned, the Office considers that the reference to ‘international agreements to which the Member State concerned is party’ should be interpreted as international agreements in those areas where no uniform EU protection is in place. For the reasons set out in paragraph 6.1 a GI protected under an international agreement concluded by Member States (either among Member States or with non-EU countries) cannot be the basis for applying

text: Article 7(1)

text: (j) EUTMR if it encroaches upon the exhaustive nature of EU law. Until recently, this only affected agricultural products, wines and spirit drinks. However,

text: Regulation (EU) 2023/2411

text: provides for a new uniform and exclusive EU system for GIs for craft and industrial products and, pursuant to

text: Article 70(1)

text: , national specific protection for GIs for craft and industrial products will cease to exist from 3 December 2026. Consequently, from this date, GI protection for this sector at the national level, deriving from these international agreements, will end. In its judgment of 08/09/2009,

text: , Budĕjovický Budvar, EU:C:2009:521, the Court discussed the exhaustive nature of EU law as regards GIs originating from Member States. In the Office’s interpretation, this also applies to non-EU GIs in the relevant product fields that enjoy protection in the territory of a Member State through an international agreement concluded between that Member State and a non-EU country. The consequences of the exhaustive nature of the EU GI system apply equally to appellations protected in an EU Member State by virtue of the Lisbon Agreement, but with some particularities for the craft and industrial sector: Regarding appellations of origin originating in an EU Member State that is party

text: to the Lisbon Agreement for products falling within the scope of

text: Regulation (EU) 2023/2411

text: , that Member State shall, no later than 2 December 2026, choose to request either (i) the registration of that appellation of origin under

text: Regulation (EU) 2023/2411

text: or (ii) the cancellation of the registration of that appellation of origin in the International Register and notify the Office of its choice (Article 64(10) of Regulation

text: (EU) 2023/2411

text: ). The Office will treat appellations of origin originating in an EU Member State that is party to the Lisbon Agreement as ‘national specific protection’ to which Article 70(1)

text: Regulation (EU) 2023/2411

text: applies mutatis mutandis. Appellations of origin originating in a non-EU Member State and protected under the

text: Lisbon Agreement in one of the EU Member States for products falling within the scope of

text: Regulation (EU) 2023/2411

text: , but not yet protected under that Regulation, continue to exist and can be used as the basis for an objection under

text: Article 7(1)

text: (j) EUTMR. The only situations where GIs protected under an international agreement concluded by Member States can still be basis for the application of

text: Article 7(1)

text: (j) EUTMR are the following. International agreements concluded with non-EU countries by a Member State

text: before its accession to the EU. This is because the obligations arising out of an international agreement entered into by a Member State before its accession to the EU have to be respected. However, Member States are required to take all appropriate steps to eliminate incompatibility between an agreement concluded before a Member State’s accession and the Treaty (see

text: Article 307

text: , Treaty Establishing the European Community, now

text: Article 351

text: TFEU, as interpreted by the Court in its judgment of 18/11/2003,

text: , Budějovický Budvar, EU:C:2003:618, § 168-172). International agreements concluded with a non-EU country by a Member State after

text: its accession to the EU but before the entry into force of the uniform EU system of protection in the given product area. Given the inherent difficulty in identifying such GIs, the Office will in these cases rely principally on observations by third parties.

text: 7 Relationship with other EUTMR provisions

text: When the mark can be objected to under

text: Article 7(1)

text: (j) EUTMR, further examination may still be necessary under the remaining possible grounds for refusal, such as

text: Article 7(1)

text: (c), (g), (k) or (l) EUTMR. Moreover, an EUTM application may be in conflict with both a GI in the wine sector and a protected traditional term for wines or with both a GI in the agricultural sector and a traditional specialty guaranteed.

text: Example

text: Finally, and importantly, when a registered trade mark is subsequently used (on the market) on goods that are not genuine products for which the limitation was indicated in the list of goods and/or services, the trade mark can be revoked under

text: Article 58(1)

text: (c) EUTMR. For further information, see the Guidelines, Part B, Examination, Section 4, Absolute Grounds for Refusal, Chapter 8, Deceptive Trade Marks (

text: Article 7(1)

text: (g) EUTMR), paragraph 4, and Part D, Cancellation, Section 2, Substantive provisions, paragraph 2.4.

text: Article 7

text: ()(k) EUTMR

text: Article 7(1)

text: (k) EUTMR applies to EUTMs that are in conflict with traditional terms for wine (TTWs) protected by either EU legislation or international agreements to which the EU is party.

text: 2 General Remarks on EU Regulations

text: Protection of TTWs is provided for in

text: Council Regulation (EU) No 1308/2013

text: , in Chapter III of Commission Implementing

text: Regulation (EU) 2019/34

text: and in Chapter III of Commission Delegated

text: Regulation (EU) 2019/33

text: ( ), which lay down certain detailed rules for the implementation of the Council Regulation (implementing and delegated acts).

text: 2.1 Definition of TTWs under EU Regulations

text: As regards the definition of TTWs,

text: recital 104

text: of

text: Council Regulation (EU) No 1308/2013

text: indicates that ‘Certain terms are traditionally used in the Union to convey information to consumers about the particularities and the quality of wines, complementing the information conveyed by protected designations of origin and geographical indications. In order to ensure the working of the internal market and fair competition and to avoid consumers being misled, those traditional terms should be eligible for protection in the Union.’ Similarly, recital 23 of Commission Delegated

text: Regulation (EU) 2019/33

text: states that, [t]he use of traditional terms to describe grapevine products is a longestablished practice in the Union. Such terms designate a production or ageing method, the quality, colour, type of place or a particular event linked to the history of a grapevine product bearing a protected designation of origin or geographical indication or indicate that it is a grapevine product having a protected designation of origin or geographical indication. Articles

text: and

text: of Regulation (EU) No 1308/2013 lay down the general rules regarding the use and protection of traditional terms. So as to ensure fair competition and avoid misleading consumers, a common framework should be laid down regarding the protection and registration of such traditional terms.

text: According to

text: Article 112 of Council Regulation (EU) No 1308/2013

text: , a ‘traditional term’ is a term traditionally used in a Member State to designate: that the product has a protected designation of origin or a protected geographical

text: indication under EU or national law; or the production or ageing method or the quality, colour, type of place, or a particular

text: event linked to the history of the product with a protected designation of origin or a protected geographical indication. In the first case a TTW is used in addition to the reference to a protected designation of origin (PDO) (e.g. ‘appellation d’origine contrôlée (AOC)’, ‘denominación de origen protegida (DO)’, ‘denominazione di origine controllata (DOC)’, ‘Landwein’) or a protected geographical indication (PGI) (‘Vin de Pays’, ‘Vino de la Tierra’, ‘Indicazione Geografica Tipica’, ‘Vinho Regional’, ‘Landwein’). In the second case a TTW is used as a description of product characteristics used for production or ageing methods, quality, colour, type of place, or for a particular event linked to the history of the product with a PDO or PGI (e.g. ‘château’, ‘grand cru’, ‘añejo’, ‘clásico’, ‘crianza’, ‘riserva’, ‘fino’, ‘Federweisser’). That said, TTWs convey information to consumers about the particularities and the quality of wines, in principle complementing the information conveyed by PDOs and PGIs, for example, ‘Gran Reserva de Fondillón’ for wine of overripe grapes of PDO Alicante, ‘Cru bourgeois’ for wine from PDO Médoc. In accordance with Article 25 of Commission Implementing

text: Regulation (EU) 2019/34

text: , protected traditional terms are recorded by the Commission in an electronic register, and will mention the following data: 1. the name to be protected as a traditional term; 2. the type of traditional term according to

text: Article 112 of Regulation (EU) No 1308/2013

text: ; 3. the language referred to in Article 24 of Delegated

text: Regulation (EU) 2019/33

text: ; 4. the grapevine product category or categories concerned by the protection;

text: 5. a reference to the national legislation of the Member State or third country in which the traditional term is defined and regulated or to the rules applicable to wine producers in the third country, including those originating from representative trade organisations, in the absence of national legislation in those third countries;

text: 6. a summary of the definition or conditions of use;

text: 7. the name of the country or countries of origin;

text: 8. the date of inclusion in the register. The eAmbrosia search tool provides information about TTWs protected in the EU.

text: 3 Relevant TTWs under EU Regulations

text: Article 7(1)

text: (k) EUTMR applies where a TTW (either from an EU Member State or from a third country) has been registered under the procedure laid down by Council

text: Regulation (EU) No 1308/2013

text: Regulation (EU) 2019/34

text: Regulation (EU) 2019/33

text: . Relevant information about TTWs can be found in the eAmbrosia database maintained by the Commission.

text: 3.1 Relevant point in time

text: Article 7(1)

text: (k) EUTMR applies only to TTWs applied for before the EUTM application and registered at the time of examining the EUTM application. The relevant dates for establishing the priority of a trade mark and of a TTW are the date of application of the EUTM (or the so-called Paris Convention priority, if claimed) and the date of application for protection of a TTW to the Commission, respectively. Where there is no relevant date information in the eAmbrosia extract, this means that the TTW in question was already in existence on 01/08/2009, the date on which the register was set up. For any TTW added subsequently, the eAmbrosia extract includes a reference to the publication in the Official Journal, which gives the relevant information. By analogy with the current practice for GIs, and in view of the fact that the vast majority of applications for TTWs usually mature into a registration, an objection will be raised when the TTW was applied for before the filing date (or the priority date, if applicable) of the EUTM application but had not yet been registered at the time of examination of the EUTM application. However, if the EUTM applicant indicates that the TTW in question has not yet been registered, the proceedings will be suspended until the outcome of the registration procedure for the TTW.

text: 4 Relevant provisions governing conflicts with trade marks

text: TTWs do not constitute intellectual or industrial property rights like GIs. They are either used in addition to the reference to GIs (e.g. ‘vino de la tierra, appellation d’origine contrôlée’) or provide information to consumers on the production/

text: ageing method, quality, colour or type of place or a particular event linked to

text: the history of the wine (e.g. Cannellino, reserva, clasico, château, añejo, cru classé, Amarone). Therefore, they should not be regarded as indicators of the geographical provenance of the wine (17/05/2011,

text: , Txacoli, EU:T:2011:220, § 33). Nevertheless, some of the protected TTWs are associated with the use of a (particular) GI . For instance, the TTW ‘Cannellino’ is an exclusive term related to a type of ‘Frascati’ wine and to its production. Frascati is a PDO. The scope of protection of protected TTWs is narrower than that of GIs. Pursuant to

text: Article 113(2) of Council Regulation (EU) No 1308/2013

text: , TTWs are protected, only

text: in the language and for the categories of grapevine products claimed in the

text: application for protection of a TTW. A specific provision on the relationship of traditional terms for wines with trade marks is found in Article 32 of Commission Delegated

text: Regulation (EU) 2019/33

text: . According to this article: 1. The registration of a trade mark that contains or consists of a traditional term which does not respect the definition and conditions of use of that traditional term as referred to in

text: , and that relates to a product falling under one of the categories listed in Part II of Annex VII thereto shall be: a. refused if the application for registration of the trade mark is submitted after the date of submission of the application for protection of the traditional term to the Commission and the traditional term is subsequently protected; or b. invalidated. 2. A name shall not be protected as a traditional term where, in the light of a trade mark’s reputation and renown, such protection is liable to mislead the consumer as to the true identity, nature, characteristic or quality of the grapevine product. 3. Without prejudice to paragraph 2, a trade mark referred to in paragraph 1 which has been applied for, registered or established by use in good faith, where national legislation so provides, in the territory of the Union, prior to the date of protection of the traditional term in the country of origin, may continue to be used and renewed notwithstanding the protection of a traditional term, provided that no grounds for the trade mark’s invalidity or revocation exist under Directive

text: of the European Parliament and of the Council ( ),

text: Directive (EU) 2015/2436

text: of the European Parliament and of the Council ( ) or under

text: Regulation (EU) 2017/1001

text: of the European Parliament and of the Council ( ). In such cases, the use of the traditional term will be permitted alongside the relevant trade marks. The Office does not automatically object to trade marks that include a term that is also a TTW. It raises an objection only in the event of misuse or false/misleading use of the TTW. The list of protected TTWs includes terms that are fairly common or that have various meanings not necessarily related to wines (such as ‘NOBLE’, ‘CLASICO’ or ‘RESERVA’). Depending on the context in which these terms are used, they may or may not be associated with wine quality. As a consequence, when examining the sign, the Office will take into account in particular whether the relevant public will link the term in the sign with certain qualities or characteristics of the wine or not. An objection was raised in the following examples.

text: No objection was raised in the following examples.

text: 5 Relevant Goods

text: refers to ‘ categories of grapevine products claimed in the [TTW] application ’. Similarly, Article 32 of Commission Delegated

text: Regulation (EU) 2019/33

text: refers to a product falling under one of these categories. The Office interprets this as meaning that, unlike GIs, objections based on conflicts with TTWs cannot be raised for comparable goods. However, objections should be raised against any relevant product referred to in

text: Article 92(1) of Council Regulation (EU) No 1308/2013

text: for the following reasons.

text: According to

text: the rules on, inter alia, traditional terms should apply to the products referred to in points 1, 3 to 6, 8, 9, 11, 15 and 16 of Part II of Annex VII. Such products are wine, liqueur wine, sparkling wine, quality sparkling wine, quality aromatic sparkling wine, semi-sparkling wine, aerated semi-sparkling wine, partially fermented grape must, wine from raisined grapes, wine of overripe grapes .

text: Since all these products are wine - based and in view of the fact that most of the EUTM applications applied for are for wines without any specification of category, objections should be raised against any relevant product referred to in

text: . For instance, in the event of an EUTM application containing the TTW ‘Fondillón’, for wine in Class 33, the objection should be raised not

text: against wine of overripe grapes that is protected by the TTW, but against wine as such (e.g. 'Fondillón' (TTW) wine ).

text: 5.1 Restrictions of the list of goods

text: Objections raised due to conflicts with GIs may be waived if the relevant goods are restricted so as to comply with the specifications of the GI in question. For TTWs, there are no such specifications but eAmbrosia search tool includes a ‘summary of definition/conditions of use’. Therefore, objections should be waived if the relevant goods are restricted so as to comply with the definition/conditions of use of the TTW in question. The Office recommended wording is ‘‘[traditional term]’ (TTW) [product]’. Other wordings are, however, acceptable as long as the applicant clearly identifies the TTW and use thereof.

text: 6 International Agreements

text: By analogy with GIs, where international agreements to which the EU is party can serve as a basis for raising an objection against a trade mark application, TTWs that may be protected under international agreements to which the EU is a party should be taken into account when assessing conflicts between a TTW and an EUTM application.

text: 7 Relationship with other EUTMR Provisions

text: When the mark can be objected to under

text: Article 7(1)

text: (k) EUTMR , further examination may still be necessary under the remaining possible grounds for refusal, such as

text: Article 7(1)

text: (j) EUTMR . In other words, an EUTM application may be in conflict with both a GI in the wine sector and a TTW. Examples

text: Finally, and importantly, when a registered trade mark is subsequently used (on the market) on the goods which are not genuine TTW products for which limitation was indicated in the list of goods, the trade mark can be revoked under

text: Article 58(1)

text: Article 7(1)

text: Article 7

text: ()(l) EUTMR

text: Article 7(1)

text: (l) EUTMR applies to EUTMs that are in conflict with traditional specialities guaranteed (TSGs) protected by either EU legislation or international agreements to which the EU is party.

text: 2 General Remarks on EU Regulations

text: 2.1 Definition of traditional specialities guaranteed under EU Regulations

text: Protection of TSGs is provided for in Title III, Chapter 2 of

text: Regulation (EU) 2024/1143

text: . As regards the definition of TSGs,

text: Article 52 of Regulation (EU) 2024/1143

text: indicates that ‘[a] scheme for traditional specialities guaranteed is established to safeguard traditional methods of production and recipes by helping producers of traditional products in marketing and communicating the value-adding attributes of their traditional recipes and products to consumers.’ According toArticle 53(1) of the Regulation, [a] name shall be eligible for registration as a traditional speciality guaranteed where it describes a product that: 1. results from a mode of production, processing or composition corresponding to traditional practice for that product;or 2. is produced from raw materials or ingredients traditionally used. Hence, TSGs highlight the traditional characteristics of a product either in its production process or composition, for instance, ‘Lambic, Gueuze-Lambic, Gueuze’ for Belgian acid beer during production of which spontaneous fermentation occurs. Unlike GIs, the TSG quality scheme does not certify that the protected food product has a link to a specific geographical area, for instance, TSG ‘Mozzarella’ for Italian fresh pulled-curd cheese and PDO ‘Mozzarella di Bufala Campana’ for mozzarella cheese originating from a particular geographical area. To qualify as a TSG, a product must, according to Article 53(2) of the Regulation, be of a specific character: ‘2. For a name to be registered as a traditional speciality guaranteed, it shall: 1. have been traditionally used to refer to the product; or 2. identify the traditional character of the product.’ In this context, reference is made toArticle 2(3) of

text: Regulation (EU) 2024/1143

text: , which defines ‘traditional’ as ‘historical usage of the name by producers in a community for a period that allows transmission between generations; that period is to be at

text: least 30 years and such usage may embrace modifications necessitated by changing hygiene, safety and other relevant practices.’ According to

text: Article 71(1) of Regulation (EU) 2024/1143

text: ,‘[a] name registered as a traditional speciality guaranteed may be used by any operator marketing a product that complies with the corresponding specification’.

text: Article 68 of Regulation (EU) 2024/1143

text: establishes the scope of protection of TSGs — ‘[r]egisteredtraditional specialities guaranteed shall be protected against any misuse, imitation or evocation, even if the protected name is translated, including as regards products used as ingredients, or against any other practice liable to mislead the consumer’.

text: 2.2 Relationship with trade marks

text: In contrast with GIs, there is no specific provision in

text: Regulation (EU) 2024/1143

text: for the relationship of TSGs with trade marks (i.e. a provision analogous to

text: Article 31

text: Article 68(1)

text: prohibits the use of the TSG in a number of situations but not the registration of a trade mark.

text: Article 7(1)

text: (l) EUTMR, however, refers to ‘trade marks which are excluded from registration pursuant to Union legislation’. The Office considers that a systematic approach should be followed and draws an analogy with

text: Article 7(1)

text: (j) EUTMR: the registration of an EUTM application should be refused or the registration of an EUTM invalidated if there is conflict with a TSG.

text: 3 Relevant TSGs Under EU Regulations

text: Article 7(1)

text: (l) EUTMR applies where a TSG has been registered under the procedure laid down by

text: Regulation (EU) 2024/1143

text: . Relevant information about traditional specialities guaranteed can be found in the eAmbrosia register maintained by the Commission.

text: 3.1 Relevant point in time

text: Article 7(1)

text: (l) EUTMR applies only to TSGs that were applied for before the EUTM application and are registered at the time when the EUTM application was examined. By analogy with the current practice for GIs and in view of the fact that the vast majority of applications for TSGs usually mature into a registration, an objection will be raised when the TSG was applied for before the filing date (or the priority date, if applicable) of the EUTM application but is not yet registered at the time when the EUTM application was examined. If the EUTM applicant does not submit observations or does not overcome the objection, the Office will suspend the examination proceedings until the TSG registration proceedings are concluded.

text: 4 Situations covered by Article 68 of Regulation (EU) 202/113

text: TSGs are used to provide information on particular methods of production and recipes. Importantly, unlike GIs, there is no link between a TSG and a specific geographical area.

text: The scope of protection of protected TSGs is narrower than that of GIs. Pursuant to

text: Article 68 of Regulation (EU) 2024/1143

text: , TSGs are protected against any misuse, imitation or evocation, even if the protected name is translated, including as regards products used as ingredients, or against any other practice liable to mislead the consumer. The exploitation of the reputation of the TSG is not contemplated.

text: The Office will apply by analogy its interpretation of the products used as ingredients, and terms such as misuse, imitation or evocation and the misleading practices referred to in

text: Article 26 of Regulation (EU) 2024/1143

text: in connection with GIs (see the Guidelines, Part B, Examination, Section 4, Absolute Grounds for Refusal, Chapter 10, Geographical Indications (

text: Article 7(1)

text: (j) EUTMR)). The Office will take into account, in particular, whether the relevant public will link the term in the sign with the product whose designation is covered by the TSG.

text: 5 Relevant goods

text: Article 54 of Regulation (EU) 2024/1143

text: requires that a TSG complies with a specification which must comprise a ‘description of the product including its main physical, chemical, microbiological or organoleptic characteristics’. The Office will only raise objections for products covered by the TSG or where such products are used as commercially relevant ingredients.

text: 5.1 Restrictions of the list of goods

text: TSG applications, in accordance with

text: Article 57 of Regulation (EU) 2024/1143

text: , must comprise a product specification. Therefore, objections should be waived if the relevant goods are restricted to comply with the product specification of the TSG. The wording that the Office recommends is ‘‘[TSG name]’ (TSG) [product covered by the TSG]’. Other wordings are, however, acceptable as long as the applicant clearly identifies the TSG and use thereof. The TSG product specifications are available in the eAmbrosia register. For an example of restrictions of the list of goods see paragraph 4.

text: 6 International Agreements

text: By analogy with GIs, where international agreements to which the EU is party can serve as a basis for raising an objection against a trade mark application, TSGs that may be protected under international agreements to which the EU is a party should be taken into account in the assessment of conflict of a TSG with an EUTM application. Currently, however, there are no TSGs protected under international agreements.

text: When the mark can be objected to under

text: Article 7(1)

text: (l) EUTMR, further examination may still be necessary under the remaining possible grounds for refusal, such as

text: Article 7(1)

text: (j) EUTMR. In other words, an EUTM application may be in conflict with both a GI in the agricultural and foodstuff sector and a protected traditional speciality guaranteed. Finally, and importantly, if a registered trade mark is subsequently used (on the market) on goods that are not genuine TSG products for which limitation was indicated in the list of goods, the trade mark can be revoked under

text: Article 58(1)

text: (c) EUTMR. For further information, see the Guidelines, Part B, Examination, Section 4, Absolute grounds for refusal, Chapter 8, Deceptive trade marks (

text: Article 7(1)

text: (g)

text: EUTMR), paragraph 4.2.1, and Part D, Cancellation, Section 2, Substantive provisions, paragraph 2.4.

text: Article 7

text: ()(m) EUTMR

text: Regulation (EU) 2015/2424

text: amending

text: Council Regulation (EC) No 207/2009

text: on the Community trade mark introduced

text: Article 7(1)

text: (m) as a specific ground for objecting to trade marks in conflict with earlier plant variety denominations. In particular,

text: Article 7(1)

text: (m) EUTMR provides for the refusal of EUTMs that consist of, or reproduce in their essential elements, an earlier plant variety denomination — registered in accordance with EU legislation, national law or international agreements to which the European Union or the Member State concerned is a party and that provide for the protection of plant variety rights — and that are filed in respect of plant varieties of the same or closely related species.

text: 2 Legislative Framework

text: As regards EU legislation protecting plant variety rights,

text: Council Regulation (EC) No 2100/94 of 27 July 1994

text: on Community plant variety rights (CPVRR) establishes a system of Community plant variety rights (CPVR) as the ‘sole and exclusive form of Community industrial property rights for plant varieties’. Plant variety (PV) represents a more precisely defined group of plants, selected from within a species, with a common set of characteristics. For instance, within one of the strawberries species (e.g. Fragaria moschata or Fragaria x ananassa Duch.), a breeder may create a new variety. New plant varieties can be protected by a sui generis intellectual property system of Plant Breeder’s Rights (PBR). Since 2005, the European Union has been party to the International Convention for the Protection of New Varieties of Plants (UPOV Convention), which has become an integral part of the European Union’s legal order. Under

text: Article 20(1)

text: UPOV Convention, a variety ‘shall be designated by a denomination which will be its generic designation’. Furthermore, each Contracting Party must ensure that no rights in the designation registered as the denomination of the variety will hamper free use of the denomination in connection with the variety, even after expiry of the breeder’s right. This actually implies that an applicant cannot validly claim to be the holder of plant breeder’s rights in order to overcome an objection based on

text: Article 7(1)

text: (m) EUTMR, even if those rights have not yet expired. The purpose of this Article is to ensure free use of the denomination in connection with the variety. Therefore, a plant breeder or their successor in title, owning a registered plant variety right, should not be able to claim an exclusive IP right over that designation registered as a plant variety denomination, under trade mark protection. The exclusive object that a plant variety right protects is a variety and not the denomination, which only represents its generic designation.

text: Both the CPVRR and the UPOV Convention make it obligatory for any person offering for sale or marketing propagating material of the protected variety to use the variety denominations, even after the expiry of the breeder’s right in that variety. Moreover, pursuant to

text: Article 7(1)

text: (m) EUTMR, plant variety denominations registered following national law or international agreements to which Member States are a party must also be taken into account.

text: 3 Definition of Plant Variety Denomination

text: Plant variety denominations identify cultivated varieties or subspecies of live plants or agricultural seeds. A variety denomination must ensure clear and unambiguous identification of the variety and fulfil several criteria (

text: Article 63

text: CPVRR). The applicant for a CPVR must indicate a suitable variety denomination, which will be used by anyone who markets such variety in the territory of a member of the International Union for the Protection of New Varieties of Plants (UPOV), even after termination of the breeder’s right (

text: Article 17

text: CPVRR). Protection is granted to plant variety denominations in order, inter alia, to protect the legitimate interest of consumers and producers in knowing the variety they are using or purchasing, as well as possibly the breeder and origin of that variety. The obligation to use the variety denominations contributes to the regulation of the market and to the safety of transactions in the agricultural and food sector, thus preventing counterfeiting and any potential misleading of the public.

text: Article 7(1)

text: (m) EUTMR applies if the following requirements are met: 1. there is a registered plant variety denomination (at EU or national level, including in third countries that are party to the UPOV Convention); 2. the plant variety denomination was registered prior to the EUTM application; 3. the EUTM application consists of, or reproduces in its essential elements, the earlier plant variety denomination; 4. the list of goods for which protection is sought for in the EUTM application includes plant varieties of the same species as, or of species closely related to, those protected by the registered plant variety denomination.

text: 4.1 Registered plant variety denominations

text: The Community Plant Variety Office (CPVO), based in Angers (France), is the European Union agency responsible for managing a system for the protection of plant variety rights. The CPVO maintains a register of protected plant varieties with their respective denominations.

text: Plant variety rights Pursuant to

text: Article 19(1)

text: CPVRR, plant variety rights expire at the end of the 25th calendar year or, in the case of varieties of vine and tree species, the 30th calendar year following the year of grant. A plant variety right is surrendered, pursuant to

text: Article 19(3)

text: CPVRR, if the holder sends a written declaration to such effect to the CPVO before expiry of the term of the right, in which case the right lapses with effect from the day following the day on which the declaration is received by the CPVO. Plant variety rights are terminated ex tunc if the CPVO declares the Community plant variety right null and void pursuant toArticle 20 CPVRR and with effect in futuro if the CPVO cancels the Community plant variety right pursuant to

text: Article 21

text: CPVRR. The protected varieties and the varieties whose CPVR has been terminated/ surrendered, or which has expired, can be searched, based on their variety denomination and/or other search criteria, through the CPVO Variety Finder ( ), available on the CPVO’s website. This reference tool can be consulted whenever the type of goods and/or services covered by the EUTM application so dictate (see paragraph 4.4 below). Accordingly, the protection of

text: Article 7(1)

text: (m) EUTMR applies not only to plant variety denominations of registered plant varieties, but also to the denominations of varieties for which protection has expired or has been surrendered or terminated. This is because, even after expiry of the protection, the variety may still be used in the market and breeders are obliged to use the denomination when trading in variety constituents. Plant variety denominations Whenever the specification of an EUTM application refers to live plants, agricultural seeds, fresh fruits, fresh vegetables or equivalent wording, the Office will verify in the CPVO Variety Finder whether the term(s) making up the essential elements of the trade mark coincide(s) with a registered variety denomination or with the denomination of a variety for which protection has expired or been surrendered or terminated. However,

text: Article 7(1)

text: (m) EUTMR is not applicable in respect of processed items in Class 31 such as dried flowers (including flowers for decoration), dried plants, hay or straw. Neither is it applicable in respect of live animals, food for animals, animal feed and equivalent wordings. The search should extend to variety denominations registered for the European Union, Member States and non-EU countries on the basis of EU legislation, national law or international agreements to which the European Union or the Member State concerned is a party. As already mentioned, both the CPVRR and the UPOV make it obligatory to use the variety denomination when offering a plant variety or the propagating material of a plant variety commercially, even after the termination of the Community plant variety right.

text: 4.2 Relevant point in time

text: Article 7(1)

text: (m) EUTMR applies only in respect of plant variety denominations that have a registration date prior to the filing date of the EUTM application. The relevant dates are the date of filing of the EUTM application (or the ‘Paris Convention priority’, if claimed) and the date of registration of the plant variety denomination.

text: 4.3 The EUTM application consists of, or reproduces in its essential elements, the plant variety denomination

text: Pursuant to

text: Article 7(1)

text: (m) EUTMR, objections are to be raised only if the EUTM application consists of, or reproduces in its essential elements, the plant variety denomination. The following situations may therefore arise. 1. The EUTM applied for consists of an earlier plant variety denomination. 2. The EUTM applied for contains an earlier plant variety denomination. Whether the application is liable to be objected to or not will require a more detailed assessment. In particular, the Office will examine whether the plant variety denomination is the essential element of the EUTM application. In order to determine whether a plant variety denomination is the essential element of an EUTM application (situation b) above), account must be taken of all the other elements, as these are likely to influence the outcome of the assessment. As the court has noted, it is necessary to establish whether the plant variety denomination occupies an essential position in the complex mark applied for, so that the essential function of origin of the mark, namely that of identifying the commercial origin of the products in question, is based on that plant variety denomination and not on the other elements that make up the complex mark applied for (18/06/2019,

text: , Kordes’ Rose Monique, EU:T:2019:421, § 31-32). In principle, a term identical to a plant variety denomination will not be considered as the essential element of an EUTM application when: the term identical to a plant variety denomination is visually in a secondary

text: position compared with the other elements of the sign; or the complexity of the sign is such that the term that is identical to a plant variety

text: denomination is just one of numerous elements of the sign; or the sign contains a conceptual meaning/message that precludes the term that is

text: identical to a plant variety denomination from being perceived as a plant variety; or the combination of elements of the sign creates a single unit that should not be

text: artificially dissected. In principle, the term identical to a plant variety denomination will be considered one of the essential elements of the EUTM application when: the other elements are all visually secondary; or

text: the conceptual meaning/message of the sign reinforces the perception of the term

text: as a plant variety denomination (other elements are perceived as mere qualifiers of a plant variety, i.e. terms such as colour, size, growth or season indicators).

text: The objection will be waived should the applicant exclude the plant varieties protected by the plant variety denomination from its list of goods applied for.

text: 4.4 Plant varieties of the same or closely related species

text: A check is to be made whenever the specification of an EUTM application refers to live plants, agricultural seeds, fresh fruits, fresh vegetables or equivalent.

text: If the check shows that the word or figurative EUTM applied for consists of, or reproduces in its essential elements, an earlier plant variety denomination registered under EU law, national law or relevant international agreements, the examiner must raise an objection under

text: Article 7(1)

text: (m) EUTMR in respect of the relevant product.

text: Taking as an example the scientific name of the product ‘oats’, Avena sativa , the term Avena describes the genus and includes the closely related species Avena abyssinica , Avena byzantine , Avena fatua , Avena nuda , etc. Similarly, the scientific name of the most common pepper is capsicum annuum . The term capsicum describes the genus and in principle includes the closely related species Capsicum baccatum, Capsicum chinense, Capsicum pubescens , etc.

text: RULE . The objection should refer to the genus of the scientific name of the plant variety denomination, which covers closely related species. Wherever possible, the Office will propose a limitation by which the relevant goods are limited to goods other than those of the genus of the plant variety (for example, in the case of GIOIA above, the application was limited for flowers to flowers; other than those of the botanical genera Dendrobium, Dianthus, Gerbera and Lilium ). If the applicant agrees with the limitation, the application will proceed to further examination. EXCEPTION . There are cases where some species within the same genus are not closely related to the others, or where species from different genera are closely related. In the first case (species within the same genus are not closely related, e.g. certain species under the genus Solanum ), Office practice, given the difficulty in proposing limitations, is to take into account the whole genus when proposing such limitation. It would be up to the applicant to comment on this and make a proposal. In the second case (species from different genera are closely related, e.g. Agrostis, Dactylis, Festuca, Festulolium, Phaklaris, Phleum and Poa ), the Office takes such species into account when drafting the objection. The list of exceptions is exhaustive. See Annex I to the Explanatory Notes on Variety Denominations under the UPOV Convention. Exceptions will be examined by the Office upon request from the EUTM applicant. See also the Annex of the CPVO Guidelines on

text: Article 63

text: CPVRR on the meaning of ‘closely related species’. When the goods applied for in Class 31 are so specific as to only cover the species protected by the PVD, including closely related species, a limitation cannot overcome an objection under

text: Article 7(1)

text: (m) EUTMR . Example: The EUTM applied for covers peppers in Class 31 and the sign consists of a PVD that protects species in the genus Capsicum (which includes all possible varieties of peppers). No limitation can be proposed, as excluding the genus Capsicum from peppers in Class 31 would leave nothing remaining in the list of goods applied for.

text: 4.5 Relationship with other EUTMR provisions

text: Where a plant variety denomination is used in the market but has not been registered or published in the CPVO or at national level,

text: Article 7(1)

text: (c) and (d) EUTMR might be applicable.

text: 1 Introduction

text: According to

text: Article 7(3)

text: EUTMR, a trade mark may still be registered despite the fact that it does not comply with

text: Article 7(1)

text: (b), (c) or (d) EUTMR, provided that it ‘has become distinctive in relation to the goods or services for which registration is requested in consequence of the use which has been made of it’.

text: Article 7(3)

text: EUTMR constitutes an exception to the rule laid down in

text: Article 7(1)

text: (b), (c) or (d) EUTMR, whereby registration must be refused for trade marks that are per se devoid of any distinctive character, for descriptive marks, and for marks that consist exclusively of indications that have become customary in the current language or in the bona fide and established practices of the trade. Distinctive character acquired through use means that, although the sign lacks inherent distinctiveness ab initio with regard to the goods and services claimed, at least a significant proportion of the relevant public has, owing to the use made of it on the market, come to see it as identifying the goods and services claimed in the EUTM application as originating from a particular undertaking.( ) Therefore, the sign has become capable of distinguishing those goods and services from those of other undertakings because they are perceived as originating from a particular undertaking. In this way, a sign originally unable to be registered under

text: Article 7(1)

text: (b), (c) or (d) EUTMR can acquire new significance, and its connotation, no longer purely descriptive or non-distinctive, allows it to overcome those absolute grounds for refusal of registration as a trade mark. A trade mark registered in accordance with

text: Article 7(3)

text: EUTMR enjoys the same protection as any other trade mark that was found inherently registrable upon examination. If the EUTM application is accepted based on

text: Article 7(3)

text: EUTMR, this information is published in the EUTM Bulletin (INID code 521).

text: 2 Requests

text: The Office will only examine acquired distinctive character following a request from the EUTM applicant. The Office is not bound to examine facts showing that the mark claimed has become distinctive through use within the meaning of

text: Article 7(3)

text: EUTMR unless the applicant has pleaded them (12/12/2002,

text: , Ecopy, EU:T:2002:319, § 47). According to

text: Article 2(2)

text: EUTMIR, the application may include a claim that the sign has acquired distinctive character through use within the meaning of

text: Article 7(3)

text: EUTMR, as well as an indication of whether this claim is meant as a principal or subsidiary one.

text: Such claim may also be made within the period referred to in

text: Article 42(2)

text: , second sentence, EUTMR. Therefore, as from 01/10/2017 and in accordance with

text: Article 2(2)

text: EUTMIR, the applicant can make the claim as a principal one (i.e. irrespective of the outcome on inherent distinctiveness), in which case the Office will take a single decision both on the mark’s inherent distinctiveness and, where there is none, on the claim of acquired distinctiveness through use. The second (new) option is to make the claim as a subsidiary one subject to a decision on inherent distinctiveness. In this case the Office will take two separate decisions at different points in time: first, one on the mark’s inherent distinctiveness and then, once that decision (finding lack of inherent distinctiveness) has become final, another on the claim of acquired distinctiveness through use. The claim must clearly and precisely identify what type it is. As regards the timing of the request, both types of claim may be made: together with the application; or

text: at the latest, in reply to the examiner’s first objection.

text: Therefore, it will not be possible to raise the claim of acquired distinctiveness through use for the first time in appeal proceedings. Where the applicant has validly made a subsidiary claim, the examiner will only decide on the inherent distinctiveness of the mark applied for and allow (in application of

text: Article 66(2)

text: EUTMR) this partial decision to be appealed in a separate appeal. Once that partial decision has become final, the examiner will resume the examination proceedings regarding the claim for acquired distinctiveness through use, specifying — with reference to the final findings on lack of inherent distinctiveness (public, territory, goods and services) — the time limit for submitting the corresponding evidence to substantiate that claim.

text: 3 The Point in Time for which Acquired Distinctiveness has to be Established

text: The evidence must prove that distinctiveness through use was acquired prior to the EUTM application’s filing date. In the case of an IR, the relevant date is the date of registration by the International Bureau or, if the designation takes place at a later stage, the designation date. Where priority is claimed, the relevant date is the priority date. Hereafter, all these dates are referred to as the ‘filing date’.

text: 3.1 Examination proceedings

text: Since a trade mark enjoys protection as of its filing date, and since the filing date of the application for registration determines the priority of one mark over another, a trade mark must be registrable on that date. Consequently, the applicant must prove that

text: distinctive character was acquired through use of the trade mark prior to the date of application for registration (11/06/2009,

text: P, Pure Digital, EU:C:2009:362, § 49, 51; 07/09/2006,

text: , Europolis, EU:C:2006:530, § 22). Evidence of use made of the trade mark after this date should not be automatically disregarded, insofar as it may provide indicative information regarding the situation prior to the date of application (28/10/2009,

text: , Green/Yellow, EU:T:2009:417, § 49).

text: 3.2 Cancellation proceedings

text: In cancellation proceedings, a trade mark that was registered in breach of the provisions of

text: Article 7(1)

text: (b), (c) or (d) EUTMR may nevertheless no longer be declared invalid if, in consequence of the use that has been made of it, it has, after registration, acquired distinctive character for the goods or services for which it is registered (

text: Article 59(2)

text: EUTMR). The precise purpose of this norm is to maintain the registration of those marks that, due to the use that has been made of them, have in the meantime — that is to say, after their registration and in any event before the application for an invalidity request — acquired distinctive character for the goods or services for which they were registered, in spite of the fact that, when registration took place, they were contrary to

text: Article 7

text: EUTMR (14/12/2011,

text: , Clasp lock, EU:T:2011:741, § 52-53, 86; 15/10/2008,

text: , Manpower, EU:T:2008:442, § 127, 146; 10/12/2008

text: , BATEAUX MOUCHES, EU:T:2008:559, § 37-38).

text: 4 Consumers

text: Distinctive character of a sign, including that acquired through use, must be assessed in relation to the perception of the average consumer for the category of goods or services in question. These consumers are deemed to be reasonably well informed, and reasonably observant and circumspect. The definition of the relevant public is linked to an examination of the intended purchasers of the goods or services concerned, since it is in relation to those purchasers that the mark must perform its essential function. Consequently, such a definition must be arrived at by reference to the essential function of a trade mark (24/09/2019,

text: , Crédit Mutuel, EU:T:2019:673, § 142): for individual marks, this is to guarantee the identity of the origin of the goods or

text: services covered by the mark to consumers or end users by enabling them, without any possibility of confusion, to distinguish the goods or services from others of another origin (29/09/2010,

text: , Représentation d’un tracteur en rouge, noir et gris, EU:T:2010:413, § 33, 38); for collective marks, the essential function is to distinguish the goods and services of

text: the members of the association that is the proprietor of the mark from those of other undertakings (20/09/2017,

text: P &

text: P &

text: P &

text: P, DARJEELING (fig.) / DARJEELING et al., EU:C:2017:702, § 63);

text: for certification marks, the essential function is to distinguish goods or services

text: which are certified by the proprietor of the mark from goods and services which are not so certified. The relevant consumer includes, therefore, not only persons who have actually purchased the goods and services but also any potentially interested person in the strict sense of prospective purchasers (29/09/2010,

text: , Représentation d’un tracteur en rouge, noir et gris, EU:T:2010:413, § 41 et seq.). Who prospective purchasers are is defined depending on the precise product or service for which registration is sought. If the claimed goods or services represent a broad category (for example, bags or watches), it is irrelevant that the actual products offered under the sign are extremely expensive luxury items — the public will include all the prospective purchasers for the goods claimed in the EUTM application, including non-luxury and cheaper items if the claim is for a broad category.

text: 5 Goods and services

text: Since the main function of a trade mark is to guarantee the origin of goods and services, acquired distinctiveness must be assessed in respect of the goods and services at issue. The applicant’s evidence must prove that the relevant class of persons, or at least a significant proportion thereof, identify the goods and services as originating from a particular undertaking because of the trade mark (04/05/1999,

text: , Chiemsee, EU:C:1999:230, § 52; 19/05/2009,

text: , Cybercrédit et al., EU:T:2009:160, § 51). Only the goods and services for which acquired distinctiveness through use has been proven may proceed to registration.

text: 6 Territorial aspects

text: Pursuant to

text: Article 1

text: EUTMR, a European Union trade mark has a unitary character and has equal effect throughout the European Union (EU). Accordingly, a mark must be refused registration even if it is devoid of distinctive character only in part of the EU. That part of the EU may be comprised of a single Member State (22/06/2006,

text: P, Bonbonverpackung, EU:C:2006:422, § 81-83; 29/09/2010,

text: , Représentation d’un tracteur en rouge, noir et gris, EU:T:2010:413 § 45, and the case-law cited therein). As a logical consequence, acquired distinctiveness must be established throughout the territory in which the trade mark did not ab initio have distinctive character (22/06/2006,

text: P, Bonbonverpackung, EU:C:2006:422, § 83, 86; 29/09/2010,

text: , Représentation d’un tracteur en rouge, noir et gris, EU:T:2010:413, § 30).

text: This is not the same test as for acquisition of reputation which must be proven in a substantial part of the EU but not in every Member State (21/04/2015,

text: , Device of a checked pattern (maroon & beige), EU:T:2015:215, § 119-120, and caselaw cited therein). Proving the acquired distinctiveness of a trade mark throughout the relevant territory can be difficult and burdensome for the applicant, particularly with regard to threedimensional, colour or other types of marks where consumer perception of a potential lack of inherent distinctiveness will most likely be the same in each Member State. In this respect, the Court has held that, despite the fact that acquired distinctiveness must be shown throughout the EU, it would be unreasonable to require proof of acquired distinctiveness for each individual Member State (24/05/2012,

text: P, Hase, EU:C:2012:307, § 62). The lack of extensive evidence for some EU countries might be counterbalanced by, among other things, relevant material involving the EU as a whole and relevant evidence in relation to cross-border markets. It might not be necessary to have physical stores in all EU Member States to show acquired distinctiveness, if it is proven that consumers have become aware of the mark by other means. For example, through online presence and online advertising on the internet and/or social media, and/or shops in popular tourist areas or airports (19/10/2022,

text: , Louis Vuitton Malletier v EUIPO - Wisniewski (Représentation d’un motif à damier II), EU:T:2022:654, § 80 ). The question arises whether the Office can determine if the evidence submitted to establish that a particular sign has acquired distinctive character through use is relevant for several Member States or even for the whole of the EU (see paragraph 6.3). Evidence from non-EU states is irrelevant, except insofar as it might enable conclusions to be drawn about use within the EU (24/06/2014,

text: , Ab in den Urlaub, EU:T:2014:568, § 45).

text: 6.1 Special provisions with respect to the accession of new Member States

text: In accordance with the provisions of the EU accession treaties, an EUTM applied for before the date of accession of a given Member State may only be rejected for reasons that already existed before the date of accession. Hence, in the Office’s examination proceedings, acquired distinctiveness must be demonstrated only with respect to Member States of the EU at the time of the EUTM application, and not those that have joined the EU subsequently.

text: 6.2 Language area

text: Acquired distinctiveness through use must be shown with respect to all Member States/territories where the objection applies (see the Guidelines, Part B, Examination,

text: Situation c) above would normally happen where: the verbal element of the mark is a basic English term, and the mark is objected to

text: in relation to the English-speaking part of the relevant consumers (in this case, the territory where acquired distinctiveness must be proved is not limited to the Member State(s) where English is the official language); the verbal element of the mark is a term in a non-EU language and the mark is

text: objected to based on a specific territory that is not necessarily the only one (in this case, the territory where acquired distinctiveness must be proved is not limited to the Member State(s) mentioned in the objection). When a ground for refusal applies in territories outside the Member State(s) in which the language giving rise to the objection is an official language and the applicant was not informed of the territories, the Office will not refuse the application because evidence of acquired distinctiveness is lacking for these territories. In these cases, the Office will inform the applicant of the relevant territories and give them an opportunity to file the required evidence.

text: For further explanations about the languages and relevant parts of the EU, see the Guidelines, Part B, Examination, Section 4, Absolute grounds for refusal, Chapter 1, General principles, paragraph 4.

text: 6.3 Acquired distinctiveness throughout the EU

text: The acquisition of distinctive character through use must be proven for the part of the EU in which the trade mark concerned did not initially have this character. This may prove difficult and burdensome for the applicant, particularly when the objection exists throughout the EU. This is normally the case for colour marks, shape marks consisting exclusively of the shape of the products themselves and purely figurative trade marks when they are found to be devoid of distinctive character, as it may be assumed that the assessment of their distinctiveness will be the same throughout the EU, unless there is concrete evidence to the contrary (24/02/2016,

text: , Shape of a bottle (3D), EU:T:2016:94, § 68). The Court has pointed out that, where distinctiveness acquired through use has to be proved throughout the EU, it is not sufficient to prove it merely in a significant part of the EU (25/07/2018,

text: P,

text: P &

text: P, SHAPE OF A 4-FINGER CHOCOLATE BAR (3D), EU:C:2018:596, § 78). The Court has also held that, under these circumstances , it would be unreasonable to require proof of acquired distinctiveness for each individual Member State (24/05/2012,

text: P, Hase, EU:C:2012:307, § 62). Furthermore, no provision in the EUTMR requires that the acquisition of distinctive character through use be established by separate evidence in each Member State. Therefore, it is possible that the evidence filed to establish that a particular sign has acquired distinctive character through use is relevant for several Member States or even for the whole of the EU (25/07/2018,

text: P,

text: P &

text: P, SHAPE OF A 4-FINGER CHOCOLATE BAR (3D), EU:C:2018:596, § 80-83). Two scenarios can be identified in this regard. 1. Regionalisation (division of the EU market into regional segments) As the Court has confirmed, this may be the case: a. where, for certain goods or services, the economic operators have grouped several Member States together in the same distribution network and have treated them, especially for marketing strategy purposes, as if they were one and the same market; b. when, due to the geographical, cultural or linguistic proximity between two Member States, the relevant public in one of them has sufficient knowledge of the goods and services that are present on the national market of the other. Therefore, where cross-border markets are sufficiently homogeneous, global evidence of distinctiveness acquired through use within such a cross-border market is likely to be relevant for all the Member States concerned, even if it contains little or no information for each Member State individually.

text: It follows that, although it is not necessary for the evidence of acquisition of distinctive character through use to be submitted for each individual Member State, this evidence must be capable of establishing the acquisition of distinctive character through use throughout the relevant territory (25/07/2018,

text: P,

text: P &

text: P, SHAPE OF A 4-FINGER CHOCOLATE BAR (3D), EU:C:2018:596, § 83). 2. Extrapolation Even where national markets cannot be grouped together or treated in a uniform manner, the conclusions on the acquisition of distinctive character reached on the basis of evidence concerning the territory of one or more Member States could be assumed to be applicable to other Member States too, if at least some evidence of use has been submitted regarding the latter, and if there are elements that allow this extrapolation — which would again require that the conditions in the respective markets are, if not the same, at least quite similar. In that regard, the Court has held that evidence of acquired distinctiveness for the ‘combination of the colours green and yellow’ throughout the EU was acceptable despite a lack of turnover figures for two Member States, since it is not necessary to provide the same types of evidence for each and every Member State, considering also that the various items of evidence can be mutually corroborative (28/10/2009,

text: , Green/Yellow, EU:T:2009:417, § 33-42 et seq.). In conclusion, for both regionalisation and extrapolation to be successfully relied on, it is essential that the EUTM applicant convincingly explains the relevance of the evidence for another Member State, for several Member States or for the whole of the EU, as the case may be. For example, if surveys covering only some Member States have been submitted, the applicant will have to demonstrate that their results are also significant for other comparable national markets, either because of the similar marketing strategies applied or because of geographical, cultural or linguistic proximity (see, by analogy, 24/02/2016,

text: , Shape of a bottle (3D), EU:T:2016:94, § 80). The mere production of market surveys from five Member States, coupled with turnover figures, as well as marketing and advertising expenses collected Member State by Member State, could not establish the existence of one or more transnational markets made up of different Member States. Furthermore, the results of the surveys could neither be extrapolated to all the Member States, nor be completed and supported in the Member States that were not covered by those surveys (19/06/2019,

text: , DEVICE OF THREE PARALLEL STRIPES (fig.), EU:T:2019:427, § 155-157). Similarly, market surveys in only eight Member States were found insufficient to prove that the relevant public in the EU attributed a unique commercial origin to a V-shaped guitar (28/06/2019,

text: , SHAPE OF A FLYING V GUITAR (3D), EU:T:2019:455, § 67-68).

text: 7 Standard of proof

text: Under

text: Article 7(3)

text: EUTMR it is necessary to prove qualified use, such that the relevant public perceives as distinctive a sign that per se is devoid of distinctive character. The requirements to prove acquired distinctiveness through use pursuant to

text: Article 7(3)

text: EUTMR are not the same as those to prove genuine use pursuant to

text: Article 47(2)

text: EUTMR and must not be confused with the test on acquisition of reputation (21/04/2015,

text: , Device of a checked pattern (maroon & beige), EU:T:2015:215, § 119-120 and case-law cited therein). The EUTM applicant must submit evidence that enables the Office to find that at least a significant proportion of the relevant section of the public identifies the products or services concerned as originating from a particular undertaking because of the trade mark (15/12/2005,

text: , Briquet à Pierre, EU:T:2005:463, § 61 and the case-law cited therein). The evidence must be clear and convincing. The EUTM applicant must clearly establish all the facts necessary to safely conclude that the mark is recognised by the relevant public as a badge of origin, that is to say, that the relevant class of persons, or at least a significant proportion thereof, identify the goods and services as originating from a particular undertaking because of the trade mark, despite the fact that, in the absence of such use, the sign at issue would lack the necessary distinctiveness. The Office will make an overall assessment of all the evidence to decide if the mark has come to identify the goods or services concerned as originating from a particular undertaking (04/05/1999,

text: , Chiemsee, EU:C:1999:230, § 49).

text: 8 Assessment of the evidence

text: For the general guidance on evidence filed during the proceedings, please see the Guidelines, Part A, General rules, Section 10, Evidence.

text: Article 97

text: EUTMR contains a non-exhaustive list of means of giving or obtaining evidence in proceedings before the Office, which may serve as guidance to applicants.

text: catalogues;

text: price lists;

text: invoices;

text: annual reports;

text: turnover figures;

text: advertising investment figures and reports;

text: advertisements (press cuttings, billboard posters, television adverts), together with

text: evidence of their intensity and reach; customer or market surveys;

text: affidavits.

text: In establishing acquired distinctiveness, the following factors, among other elements, can be considered (29/09/2010,

text: , Représentation d’un tracteur en rouge, noir et gris, EU:T:2010:413, § 32 and 22/03/2023,

text: , BIO-BEAUTÉ, EU:T:2023:147 § 40): the market share held by the mark for the relevant goods or services;

text: how intensive, geographically widespread and long-standing use of the mark has

text: been; the amount invested by the undertaking in promoting the mark for the relevant

text: goods or services; the proportion of the relevant public who, because of the mark, identifies the goods

text: or services as originating from a particular undertaking; statements from chambers of commerce and industry or other trade and

text: professional associations. Certain evidence has usually greater evidential value than others (see 29/01/2013,

text: , Cortadora de cerámica, EU:T:2013:40, § 74, 19/10/2022,

text: , DEVICE OF A CHEQUERBOARD PATTERN (fig.), EU:T:2022:654, § 99 and 22/03/2023,

text: , BIO-BEAUTÉ, EU:T:2023:147, § 57). The Office differentiates between direct evidence and secondary evidence. Direct evidence is usually the most relevant means of evidence and can consist of: surveys;

text: market research;

text: statements from independent trade and professional associations or public

text: authorities. On the other hand, secondary evidence can support direct evidence and can consist of: sales figures;

text: invoices;

text: magazines;

text: catalogues;

text: advertising material.

text: Evidence that cannot be related to a certain point in time will normally be insufficient to show that distinctiveness had been acquired before the filing date. Evidence outside the EU cannot on its own show the required market recognition of the relevant public within the EU. Evidence that mixes material relating to the EU with that relating to non-EU territories and does not permit the Office to identify the specific extent of EU-only use, will be similarly devoid of probative value for the relevant EU public. Best practice – applicants should ensure that the evidence: shows use of the mark applied for;

text: shows use of the mark in relation to the goods and services applied for;

text: identifies the dates of use;

text: identifies the specific and relevant geographical territory of use within the EU;

text: shows the relevant public’s perception of the mark.

text: If the evidence does not meet the requirements set out above, it may not be sufficient to support the applicant’s claims.

text: 8.1 Types of evidence particularly relevant to prove acquired distinctiveness by use

text: 8.1.1 Opinion polls and market surveys

text: To ensure the probative value of opinion polls and surveys, applicants should refer to the rules explained under Part A, General rules, section 10, Evidence, 4.3 Opinion polls and market surveys. Opinion polls concerning the proportion of the relevant public that recognises the sign as indicating the commercial origin of the goods or services can, if conducted properly, constitute one of the strongest kind of evidence. They can show the actual perception of the relevant public, in particular where they contain non-leading questions and are based on a representative sample (19/10/2022,

text: , DEVICE OF A CHEQUERBOARD PATTERN (fig.), EU:T:2022:654, § 111). The case-law does not prescribe fixed percentages of market penetration or of recognition by the relevant public (19/06/2014,

text: , Oberbank e.a., EU:C:2014:2012, § 48). Rather than using a fixed percentage of the relevant public in a given market, the evidence must show that a significant proportion of the public perceives the mark as identifying specific goods or services as originating from a particular undertaking. The results of a consumer survey cannot be the only decisive criterion in support of the conclusion that distinctive character has been acquired through use (19/06/2014,

text: , Oberbank e.a., EU:C:2014:2012, § 48). They must be complemented by other means of evidence.

text: 8.1.2 Market share

text: The market share held by the trade mark in relation to the goods and/or services applied for may be relevant for assessing whether that mark has acquired distinctive character through use. This is because such market penetration might enable the Office to infer that the relevant public would recognise the mark as identifying the goods or services as originating from a specific undertaking and thus, distinguish them from the goods and services of other undertakings (22/06/2006,

text: P, Bonbonverpackung, EU:C:2006:422, § 76). It is important to be able to establish a link between the market share and the consumer perception of the mark at stake.

text: 8.1.3 Advertising and turnover expenses

text: Figures concerning turnover and advertising expenses can have a significant impact on the assessment of the evidence (for advertising expenses, see 22/06/2006,

text: P, Bonbonverpackung, EU:C:2006:422, § 77 et seq.). This information is one of the most readily available forms of evidence. However, in the majority of cases, they are not sufficient alone to prove acquired distinctiveness of a trade mark through use. This is because turnover/advertising costs alone, without additional corroborative details, are frequently too general to allow specific conclusions to be drawn about the use of one particular trade mark. Turnover and advertising figures often include sales or promotion of other trade marks, or of significantly different forms of the trade mark at issue (for example, figurative trade marks rather than word marks, or differing word elements in a figurative mark). They are also often too general to allow identification of the specific markets under consideration. Advertising material, as such, does not demonstrate that the public targeted by the goods or services perceives the sign as an indication of commercial origin (24/09/2019,

text: , PDF Expert, EU:T:2019:666, § 36). For further guidance regarding promotional materials and publications, please see the guidelines, Part A, General rules, Section 10, Evidence, 4.8 Promotional materials and publications. Indeed, many attempts to prove distinctiveness acquired through use fail because the evidence on advertising provided by the party is not sufficient to prove a link between the market share and the advertising activities, on the one hand, and consumer perceptions on the other. Best practice: The applicant should ensure the evidence: contains elements that clearly prove a link between the turnover and/or advertising,

text: on the one hand, and consumer perception on the other hand; precisely identifies the turnover/advertising figures and evidence relating to the

text: mark applied for, as well as their link to the relevant goods and services; contains a breakdown of annual figures per market if possible; and

text: shows the specific period(s) of use (including details of when use commenced) for

text: the Office to establish whether the evidence proves the acquired distinctiveness of the trade mark before the filing date. Evidence regarding advertising and turnover expenses is likely to be insufficient to support the claim of acquired distinctiveness by use when it does not comply with these requirements.

text: 8.1.4 Affidavits (sworn or affirmed written statements)

text: To ensure the probative value of affidavits, applicants should refer to the rules explained under Part A, General rules, Section 10, Evidence, 4.2 Affidavits. Sworn statements, particularly from chambers of commerce and industry, other professional associations or independent bodies, or from public authorities, relating to the relevant public’s perception of a trade mark, constitute ‘direct’ evidence of the acquisition of distinctive character through use. This is particularly where they emanate from independent sources and their content is sound and reliable (19/10/2022,

text: , DEVICE OF A CHEQUERBOARD PATTERN (fig.), EU:T:2022:654, § 99). When a declaration is not made by an independent third party, but by a person connected to the applicant through an employment relationship, for example, it is treated as merely indicative and needs to be corroborated by other evidence (21/11/2012,

text: , PHOTOS.COM, EU:T:2012:614, § 51). Affidavits must identify precisely the trade mark applied for (13/09/2012,

text: , ESPETEC, EU:T:2012:424, § 82 et seq.).

text: 8.1.5 Prior registrations and acquired distinctiveness

text: National registration obtained on the basis of acquired distinctiveness is not binding, but it may be taken into account when the Office is able to assess the evidence submitted to the national IP office in question. The date that the evidence submitted at national level refers to will usually be different from the filing date of the EUTM application. This can be relevant in the assessment. The applicant may also refer to prior national registrations where no acquired distinctiveness is claimed. Nevertheless, it is established case-law that such registrations do not bind the Office. The Office is not bound by its previous decisions and such cases must be assessed on their own merits (21/05/2014,

text: , BATEAUX MOUCHES, EU:T:2014:264, § 72-73).

text: 8.2 Use of the sign

text: Acquired distinctiveness must be demonstrated with respect to the sign applied for. The evidence should show examples of how the trade mark is actually used (brochures, packaging, samples of the goods, etc.).

text: 8.2.1 Use of the sign with insignificant variations

text: The concept of use of a trademark within the meaning of

text: Article 7(3)

text: EUTMR must be interpreted as referring not only to the use of the mark in the form in which it was submitted for registration, but also to the use of the trade mark in forms that differ solely by insignificant variations. Such forms are to be regarded as broadly equivalent (19/06/2019,

text: , DEVICE OF THREE PARALLEL STRIPES (fig.), EU:T:2019:427, § 62). Where a trade mark is extremely simple, even minor alterations to that mark may constitute significant changes, so that the amended form may not be regarded as broadly equivalent to the mark as registered. Indeed, the simpler the mark, the less likely it is to have distinctive character and the more likely it is for an alteration to that mark to affect one of its essential characteristics and its perception by the relevant public (19/06/2019,

text: , DEVICE OF THREE PARALLEL STRIPES (fig.), EU:T:2019:427, § 72).

text: 8.2.2 Use of the sign in combination with another trade mark

text: It is possible to prove acquired distinctiveness of a sign that has been used together with other trade marks (28/10/2009,

text: , Green/Yellow, EU:T:2009:417, § 27),

text: provided that the relevant consumer attributes to the sign in question the function of identification (07/07/2005,

text: , Have a break, EU:C:2005:432; 30/09/2009,

text: , !, EU:T:2009:374, § 43; 28/10/2009,

text: , Green/Yellow, EU:T:2009:417, § 46). Although the trade mark applied for has been used as part of a registered trade mark or in conjunction with such a mark, for the purposes of registration of the mark itself, the applicant must prove that that mark alone, as opposed to any other trade mark that may also be present, identifies the particular undertaking from which the goods originate (16/09/2015,

text: , Nestlé KIT KAT, EU:C:2015:604, § 66; 24/02/2016,

text: , Shape of a bottle (3D), EU:T:2016:94, § 76; 16/03/2016,

text: , LAATIKON MUOTO (3D), EU:T:2016:149, § 51).

text: 8.2.3 Use as a trade mark

text: Acquired distinctiveness must be the result of the use of a sign as a trade mark. For three-dimensional shapes, use as a purely functional packaging is not use as a trade mark (25/09/2014,

text: , Shape of goblets (3D), EU:T:2014:813, § 56-58 and the case-law cited therein). The same applies to descriptive expressions, which will not be considered to use as a trade mark. For example, the sign ‘Gifflar’ (a kind of bread in Swedish) on the packaging of pastries, together with descriptive indications of flavours, was made in a descriptive context and not as a badge of origin (09/07/2014,

text: , Gifflar, EU:T:2014:620, § 44-45).

text: 8.3 Length of use

text: The evidence should indicate when use commenced and should also show that the use was continuous or indicate reasons if there are gaps in the period of use. As a general rule, long-standing use is likely to be an important persuasive element in establishing acquired distinctiveness. The longer customers and potential customers have been exposed to a mark the more likely they are to have made the connection between that mark and a single source in trade. Considering, however, that length of use is only one of the factors to be taken into account, there may be situations where exceptions to the above rule are justified, in particular when other factors may also come into play that are capable of making up for a short length of use. For example, where products or services are the subject of a major advertising launch and/or the sign applied for is a mere variant of a sign already in long use, it may be the case that acquired distinctiveness can be achieved quite quickly. This could be the case, for instance, where a new version of an existing and widely used computer-operating system is launched under a sign that essentially reproduces the structure and/or contents of the trade mark applied to previous versions of the

text: product. The trade mark for such a product would be capable of achieving widespread acquired distinctiveness within a fairly short period of time simply because all existing users will immediately be made aware that the sign applied for refers to the upgrading to the new version. In the same vein, it is in the nature of certain major sporting, musical or cultural events that they take place at regular intervals and are known to have extremely wide appeal. These major events are anticipated by millions, and the knowledge that the event is due on a particular date precedes the formal announcement of where it will take place. This circumstance creates intense interest in the nominated location of such events and in the announcement thereof (‘city/country+year’ marks). It is therefore reasonable to suppose that the moment a particular event, tournament or games is announced as having been allocated to a particular city or country, it is likely to become known instantly to practically all relevant consumers with an interest in the sector concerned or to professionals in the sector. This may thereby give rise to the possibility of very rapid acquired distinctiveness of a mark concerning a forthcoming event, in particular where the sign reproduces the structure of previously used trade marks with the result that the public immediately perceives the new event as a sequel to a series of well-established events. The assessment of such rapid acquired distinctiveness will follow the general criteria regarding, for instance, extent of use, territory, relevant date or targeted public, as well as regarding the onus on the applicant to provide evidence thereof. The only particularity refers to length of use and the possibility that, under certain circumstances, the acquisition of acquired distinctiveness may occur very rapidly, or even instantaneously. As under any other claim for acquired distinctiveness, it is for the applicant to demonstrate that the public is able to perceive the trade mark in question as a distinctive sign.

text: 8.4 Post-filing-date evidence

text: The evidence must show that, prior to the filing date, the trade mark had acquired distinctive character through use. However, this does not preclude the possibility that account may be taken of evidence that, although subsequent to the filing date, enables conclusions to be drawn regarding the situation as it was on the filing date (19/06/2014,

text: , Oberbank e.a., EU:C:2014:2012, § 60). Therefore, evidence cannot be rejected merely because it post-dates the filing date. Accordingly, such evidence must be assessed and given due weight. As an example, a trade mark that enjoys particularly relevant recognition on the market or a substantially relevant market share a few months after the filing date may have had acquired distinctiveness also on the filing date.

text: Part B Examination Section 4 Absolute grounds for refusal Chapter 15 European Union collective marks

text: 1 Character of Collective Marks

text: 1.1 Definition

text: A European Union collective mark (EU collective mark) is a specific kind of EUTM that, pursuant to

text: Article 74(1)

text: EUTMR, ‘is described as such when the mark is applied for and is capable of distinguishing the goods or services of the members of the association which is the proprietor of the mark from those of other undertakings’. It is one of the three kinds of marks set out in the Regulation, along with individual marks and certification marks.

text: 1.2 Specific function

text: An EU collective mark's essential function is to distinguish the goods and services of the members of the association that owns the mark from those of other companies that do not belong to that association (20/09/2017,

text: P &

text: P &

text: P &

text: P, DARJEELING (fig.) / DARJEELING et al., EU:C:2017:702, § 63; 12/12/2019,

text: P, EIN KREIS MIT ZWEI PFEILEN (fig.), EU:C:2019:1076, § 26, 57, 58). Therefore, the EU collective mark indicates the commercial origin of certain goods and services by informing the consumer that the producer of the goods or the service provider belongs to a certain association and has the right to use the mark. Even geographically descriptive EU collective marks (

text: Article 74(2)

text: EUTMR) must be capable of fulfilling the essential function of a collective mark to indicate the collective commercial origin of the goods sold under that trade mark (20/09/2017,

text: P &

text: P &

text: P &

text: P, DARJEELING collection de lingerie (fig.) / DARJEELING et al., EU:C:2017:702, § 54 et seq; 05/03/2020,

text: P, BBQLOUMI (fig.) / HALLOUMI, EU:C:2020:170, § 74). An EU collective mark is typically used by companies, together with their own individual marks, to indicate that they are members of a certain association (12/12/2019,

text: P, EIN KREIS MIT ZWEI PFEILEN (fig.), EU:C:2019:1076, § 54). For example, Spain’s Association of Shoe Manufacturers may want to apply for the collective mark ‘Asociación Española de Fabricantes de Calzado’, which, while belonging to the association, is also going to be used by all its members, who might be competitors. A member of the association may want to use the collective mark in addition to its own individual mark, which could be, for example, ‘Calzados Luis’.

text: 1.3 Relationship with individual and certification marks

text: It is up to the applicant to decide whether the trade mark fulfils the requirements of a collective mark, as opposed to those of an individual mark or certification mark within the meaning of

text: Article 83

text: EUMTR. This means that, in principle, the same sign applied for as an EU collective mark might also be applied for as an individual EUTM or EU certification mark, provided that the respective conditions of the EUTMR are met for each application. The three kinds of marks do not differ necessarily with respect to the signs per se but as regards other characteristics specific to each one of them, including, in particular, the requirements of ownership and the conditions of use of the mark. However, an applicant should be aware of the fact that, in the event of having to subsequently demonstrate genuine use of the marks, it will probably be rather difficult to show use of the same sign for different kinds of marks. For further information regarding genuine use of a mark in accordance with its function, please see the Guidelines, Part C, Opposition, Section 7, Proof of Use, paragraph 2.3.1. For example, an association can file an application for the word mark ‘Tamaki’ either as an individual mark, a certification mark or a collective mark, depending on the mark’s intended use (by the association itself or its members, or as a sign of guarantee of a characteristic or not). If it is applied for as an EU collective mark, certain additional formalities must be met, such as the submission of regulations governing use (see the Guidelines, Part B, Examination, Section 2, Formalities, paragraph 8.2). After filing the application, changes to the kind of mark (between collective, certification and individual marks) are accepted only when it is obvious from the application that the wrong kind of mark has been selected (see the Guidelines, Part B, Examination, Section 2, Formalities, paragraph 8.4).

text: 1.4 Applicable provisions and examination

text: The EUTMR provisions apply to EU collective marks, unless

text: Articles 75

text: to 82 EUTMR provide otherwise. On the one hand, EU collective marks are therefore subject to the general EUTM regime and on the other hand, to some exceptions and particularities. It follows, firstly, that an application for an EU collective mark is, in principle, subject to the same examination procedure and conditions as an application for an individual mark. In general terms, the classification of goods and services, and the examination of formalities and of absolute grounds for refusal, follow the same procedure as that applied to individual trade marks. For example, examiners will check the list of goods and services or the language requirements in the same way as they do with individual trade marks. Similarly, if the EU collective mark falls under one of the grounds for refusal of

text: Article 7

text: EUTMR , this will also be examined.

text: Pursuant to the new provision of

text: Article 16

text: EUTMIR , the regulations submitted by the applicant governing the use of its EU collective mark must cover its use for all the goods and services included in the list of the EU collective mark application. For EU collective marks conflicting with geographical indications (GIs), traditional terms for wine or traditional specialities guaranteed, the regulations governing the use of an EU collective mark should accurately reflect any limitation introduced to overcome such conflicts. For example, the regulations governing use of an EU collective mark in conflict with the ‘XYZ’ GI for wines should accurately reflect the fact that they refer to the use of the trade mark for ‘XYZ’ (GI) wines . For more details on GIs see the Guidelines, Part B, Examination, Section 4, Absolute Grounds for Refusal, Chapter 10, Trade Marks in Conflict with Geographical Indications (

text: Article 7(1)

text: (j) EUTMR ), for more information on traditional terms for wines see the Guidelines, Part B, Examination, Section 4, Absolute Grounds for Refusal, Chapter 11, Trade Marks in Conflict with Traditional Terms for Wines (

text: Article 7(1)

text: (k) EUTMR) , and for more information on traditional specialities guaranteed, see the Guidelines, Part B, Examination, Section 4, Absolute Grounds for Refusal, Chapter 12, Trade Marks in Conflict with Traditional Specialities Guaranteed (

text: Article 7(1)

text: (l) EUTMR) . Secondly, the examination of an EU collective mark will also consider the exceptions and particularities of this kind of mark. These exceptions and particularities refer both to the formal and substantive provisions. As regards formalities, the requirement for regulations governing use of the mark is, for example, a specific characteristic of an EU collective mark. (For further details of the examination of formalities of EU collective marks, including the regulations governing use of the mark, see the Guidelines, Part B, Examination, Section 2, Formalities, paragraph 8.2 ). The substantive exceptions and particularities that apply to an EU collective mark are described below.

text: 2 Ownership

text: Ownership of EU collective marks is limited to (i) associations of manufacturers, producers, suppliers of services, or traders that, under the terms of the law governing them, have the capacity in their own name to have rights and obligations of all kinds, to make contracts or accomplish other legal acts and to sue and be sued; and (ii) legal persons governed by public law (

text: Article 74

text: EUTMR). The first type of owner typically comprises private associations with a common purpose or interest. They must have their own legal personality and capacity to act. As set out in the Guidelines, Part B, Examination, Section 2, Formalities, paragraph 8.2.1, ‘[c]ollective does not mean that the mark belongs to several persons [co-applicants/coowners] nor that it designates/covers more than one country’. Associations may be established under different legal forms, including that of private corporations provided that it shows that its internal structure is of an associative nature (such as Gesellschaften mit beschränkter Haftung).

text: The same applies to the second type of owners. Taking into account the essential function of collective marks (i.e. to distinguish the goods or services of the members of the association that is the proprietor of the mark from those of other undertakings), ‘legal persons governed by public law’ have to be either associations in a formal sense or need to have an internal structure of an associative nature. This concept includes, for example, associations or corporations governed by public law, such as the consejos reguladores or colegios profesionales under Spanish law [practice confirmed by decision, 27/02/2026, Grand Board of Appeal, in case R0378/2020-G - Burgos alimenta (fig.)]. When used below, the term ‘association’ refers to either of the aforementioned types of owner acceptable under

text: Article 74

text: EUTMR.

text: 3 Specific Absolute Grounds of Refusal

text: 3.1 Misleading as to the character or meaning of the mark

text: Under

text: Article 76(2)

text: EUTMR, the examiner must refuse the application if the public is liable to be misled as regards the character or the meaning of the mark, in particular if it is likely to be perceived as something other than a collective mark. This refers to the situation where the mark will not be perceived as a collective mark by the public but rather as an individual or certification mark. For instance, a collective mark would be misleading to the public if it gives the impression that it is available for use by anyone meeting certain objective standards. However, a collective mark, by nature, cannot be used by non-members of the association (e.g. third party users, licensees, etc.). The regulations governing use contain a clear indication of who is entitled to use the collective mark (any member of the association or if additional requirements for members are in place) and, therefore, they grant to members the status of authorised users of the collective mark. If the regulations governing use permitted use of the collective mark by non-members of the association, this would not comport with the character of the collective mark. Furthermore, a collective mark will be misleading if it conveys a strong certification

text: message (for example, (invented example), which is a clear contradiction of the function of the collective mark). A collective mark would not be considered misleading as to its character by the sole fact that the regulations governing use may also include specific requirements of use with respect to the quality of the goods and services protected by the mark. However, where examination of the regulations governing use reveals that the mark is actually to be used as a certification mark and not as an indicator that the goods and services come from the members of the association, it will be considered to mislead the public.

text: Likewise, if a collective mark consists of a GI , the public is liable to be misled as regards the character or significance of the mark because that element may be taken to be a geographical indication rather than a collective mark whose function is to indicate the membership of an association. For more details on GIs see the Guidelines, Part B, Examination, Section 4, Absolute Grounds for Refusal, Chapter 10, Trade Marks in Conflict with Geographical Indications (

text: Article 7(1)

text: (j) EUTMR).

text: 3.2 Regulations governing use

text: The regulations governing use must be filed within 2 months of the filing date of the application of the collective mark (

text: Article 75(1)

text: EUTMR) and their content must comply with the requirements of

text: Article 16

text: EUTMIR. For complete details regarding the content of the regulations of use, see the Guidelines, Part B, Examination, Section 2, Formalities, paragraph 8.2.3, Regulations governing use of collective marks. The Office recommends the use of its template (available at https:// www.euipo.europa.eu/en/trade-marks/before-applying/types-of-trade-marks ), which guides applicants through the process of drafting the regulations governing use. The regulations governing use constitute a mandatory part of the collective mark. In particular, they are an essential element of the examination since they contain relevant information on the collective mark scheme and thus define the subject matter of protection. Given their significance, the regulations governing use should be drafted in a clear and accessible manner. The regulations governing use should reflect the specific kind of mark claimed in the application and the fact that the mark is indeed a collective mark, which will be used by the members of the association. The regulations of use must comply with the formalities requirements (see the Guidelines, Part B, Examination, Section 2, Formalities, paragraph 8.2.3, Regulations governing use of collective marks), reflect the kind of mark being applied for (see paragraph 3.1 above regarding misleading applications) and comply with public policy and accepted principles of morality. Substantive examination of the application will begin only once the regulations governing use have been received.

text: 3.2.1 Compliance with public policy and morality

text: If the regulations governing use of the mark are contrary to public policy or to accepted principles of morality, the EU collective mark application must be refused under

text: Article 76(1)

text: EUTMR. This ground for refusal applies in addition to

text: Article 7(1)

text: (f) EUTMR, which relates in the first place to the sign applied for. It refers to situations where, regardless of the trade mark, the regulations governing use of the mark contain a provision that is contrary to public policy or to accepted

text: principles of morality. This would be the case, for example, where the authorisation or conditions of use discriminate between market operators without due justification (such as a lack of objective criteria or the application of inadmissible criteria) or where the regulations governing use establish manifestly discriminatory fees.

text: 3.2.2 Remedies

text: In some cases, it will be possible to modify the regulations governing use in order to remove a ground for refusal of an EU collective mark application (

text: Article 76(3)

text: EUTMR) raised by the Office under

text: Articles 76(1)

text: and (2) EUTMR. In all cases, the applicant has to submit new and complete regulations governing use. The Office will then assess if the objection can be waived as a consequence of the content of the new text.

text: 4 Specificities as Regards Examination of the General Absolute Grounds for Refusal

text: In addition to the specific grounds for refusal applicable to collective marks, applications for this kind of mark need to be examined with regard to the absolute grounds for refusal listed in

text: Article 7(1)

text: EUTMR (

text: Article 74(3)

text: EUTMR). This means that an EU collective mark application will, like any other EUTM application, be assessed on all general grounds for refusal laid down in

text: Article 7(1)

text: EUTMR, without prejudice to the application of

text: Article 7(3)

text: EUTMR. If, for example, a collective mark is not inherently distinctive under

text: Article 7(1)

text: (b) EUTMR, it will be refused (18/07/2008,R 229/2006-4, CHARTERED MANAGEMENT ACCOUNTANT, § 7). To the extent that

text: Article 7(1)

text: (b), (c) or (d) EUTMR and the corresponding exception for acquired distinctiveness (

text: Article 7(3)

text: EUTMR) also apply to collective marks, any claim of distinctiveness acquired through use will need to be supported by evidence showing that use of the mark has been made and that the mark is in fact recognised on the relevant market as a collective mark.

text: Pursuant to

text: Article 74(2)

text: EUTMR, by way of derogation from

text: Article 7(1)

text: (c) EUTMR, signs or indications that may serve, in trade, to designate the geographical origin of the goods or services may constitute EU collective marks. However,

text: Article 74(2)

text: EUTMR is not an exception to the requirement of distinctiveness.

text: Article 7(1)

text: (b) and

text: Article 7(3)

text: EUTMR apply also to EU collective marks. Therefore, where an association applies for registration, as an EU collective mark, of a sign, which may designate a geographical origin, it is incumbent on it to ensure that that sign has elements that enable the consumer to distinguish the goods or services of its members from those of other undertakings (05/03/2020

text: P, BBQLOUMI (fig.) / HALLOUMI, EU:C:2020:170, § 72 and 73).

text: The following examples illustrate applications for EU collective trade marks that, although falling within the geographical derogation under

text: Article 74(2)

text: EUTMR, were refused under

text: Article 76(1)

text: EUTMR due to their lack of distinctiveness under

text: Article 7(1)

text: (b) EUTMR.

text: In other words, a sign applied for as an EU collective mark must have elements

text: capable of distinguishing the goods or services of the members of the

text: association from those of other undertakings to be considered distinctive within the meaning of

text: Article 7(1)

text: (b) EUTMR. The Office will assess on a case-by-case basis whether the signs containing geographically descriptive terms, including GIs, contain elements that are sufficient to render the mark distinctive as a collective mark.

text: Consequently, the exception provided for in

text: Article 74(2)

text: EUTMR is reserved for collective trade marks that are distinctive in the sense of being able to distinguish the goods or services of the members of the association from those of other undertakings. At the same time, these marks may also serve to designate the geographical origin of the goods or services in question.

text: For instance, applications for the signs ‘ALICANTE’ for tourist services or ‘ACEITE DE LA COMUNITAT VALENCIANA’ (oil of the Valencian Community) for edible oils would be refused under

text: Article 7(1)

text: (b) EUTMR, because they do not contain any elements capable of distinguishing the goods/services of the members of the association from those of other undertakings.

text: Conversely, the signs ‘ASOCIACION DE GUIAS DE LA CIUDAD DE ALICANTE’ (association of guides of the city of Alicante) or ‘CONSEJO REGULADOR DE LA D.O.P. ACEITE DE LA COMUNITAT VALENCIANA’ (regulatory body of the PDO oil

text: of the Valencian Community) identify a specific association and might be accepted as collective marks for tourist services or edible oils respectively pursuant to

text: Article 74(2)

text: EUTMR. Finally, trade marks that may serve in trade to designate the geographical origin of the goods and services must in any event comply with the authorisation set out in

text: Article 75(2)

text: EUTMR. According to this provision, the regulations governing use of an EU collective mark availing of the derogation provided by

text: Article 74(2)

text: EUTMR must authorise any person whose goods or services originate in the geographical area concerned to become a member of the association that is the proprietor of the mark.

text: In the event that the goods and services have to be limited as a consequence of an objection raised under

text: Article 7(1)

text: (j) (geographical indication), 7(1)(k) (traditional terms for wines) or 7(1)(l) EUTMR (traditional specialities guaranteed), the applicant of the EU collective mark has to amend the regulations governing use accordingly (

text: Article 16

text: (h) EUTMIR). For further information regarding these objections, please see the Guidelines, Part B, Examination, Section 4, Absolute Grounds for Refusal, Chapter 10 Trade Marks in Conflict with Geographical Indications (

text: Article 7(1)

text: (j) EUTMR), Chapter 11, Trade Marks in Conflict with Traditional Terms for Wines (

text: Article 7(1)

text: (k) EUTMR) and Chapter 12, Trade Marks in Conflict with Traditional Specialities Guaranteed (

text: Article 7(1)

text: (l) EUTMR).

text: Part B Examination Section 4 Absolute grounds for refusal Chapter 16 European Union certification marks

text: 1 Relevant Provisions

text: As of 1 October 2017, the certification mark is codified as a new kind of European Union trade mark governed by specific provisions. Its main objective is to provide a specific legal framework for protecting EU certification marks (see

text: recital 27

text: of

text: Regulation (EU) 2015/2424

text: amending

text: Council Regulation (EC) No 207/2009

text: ). Until the latest amendment of the EUTMR by Amending

text: Regulation (EU) 2015/2424

text: , certification marks could not be protected as European Union trade marks. The relevant specific provisions for certification marks have been laid down in Chapter VIII EUTMR and are completed by the provision of

text: Article 17

text: EUTMIR. EU designations in international registrations (IRs) are addressed in

text: Article 194

text: EUTMR. The general provisions of the EUTMR apply to EU certification marks as well, unless the specific provisions of

text: Articles 83

text: to 93 EUTMR provide otherwise. The latter lay down some particularities and exceptions to the general EUTM regime as regards EU certification marks, which need to be taken into account when filing and examining such marks.

text: 2 Definition and Specific Function

text: 2.1 Definition

text: The certification mark is a third kind of European Union trade mark established by the EUTMR in addition to the individual trade mark and the collective trade mark.

text: Article 83(1)

text: EUTMR defines the EU certification mark as a mark that ‘is capable of distinguishing goods or services which are certified by the proprietor of the mark in respect of material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics, with the exception of geographical origin, from goods and services which are not so certified’. The list of possible characteristics to be certified by an EU certification mark is nonexhaustive and can relate to characteristics other than material, mode of manufacture or performance, quality or accuracy. It explicitly excludes, however, the possibility of certifying the geographical origin of goods or services. The owner of the certification mark does not necessarily have to provide the certification services itself. It is sufficient that the certification process is conducted under its control and supervision.

text: 2.2 Specific function

text: A certification mark indicates that the goods or services bearing the mark (i) comply with a given standard set out by the owner of the mark (ii) as a result of a control set up by the certification mark owner, (iii) irrespective of the identity of the undertaking that actually produces or provides the goods and services at issue and actually uses the certification mark. The certification mark’s essential distinguishing function, therefore, relates to the guarantee of specific characteristics of certain goods and services.

text: 3 Main Elements

text: 3.1 Sign and distinguishing capacity

text: First, as with any EUTM, a certification mark needs to be a sign capable of being represented on the Register of European Union trade marks. In this respect, the general rules apply (

text: Article 83(3)

text: and

text: Article 4

text: EUTMR). Second, the sign should have the capacity to fulfil the certification mark’s specific function of distinguishing goods or services that are certified with respect to a given standard from those that are not so certified (

text: Article 83(1)

text: and (3),

text: Article 4

text: (a) and

text: Article 7(1)

text: (a) EUTMR).

text: 3.2 Description as certification mark

text: The applicant for a certification mark has to describe it as such in its application (

text: Article 83

text: EUTMR). Therefore, when submitting an application, the applicant will include a statement to the effect that the application is for registration of an EU certification mark (

text: Article 2(1)

text: (i) EUTMIR). The kind of mark selected by the applicant will not be changed to any other kind of mark unless examination of the application reveals that the kind of mark indicated in the application is obviously wrong (see the Guidelines, Part B, Examination, Section 2, Formalities, paragraph 8.4).

text: 3.3 List of goods and services

text: Certification marks should be applied for in respect of the goods and services that will be certified by the owner of the mark. The list of goods and services has to comply with the general rules of precision and clarity (

text: Article 33

text: EUTMR).

text: The list does not need to contain an explicit statement that the goods and services listed are subject to certification (in general or against a particular standard), as a certification mark has in any case to be ‘described as such’ in the application.

text: For example, if the sign were applied for as a certification mark for nuts, crackers and muffins (invented example), there would be no need to explicitly specify certified by ‘name of the applicant’, nor under the certification of the certified vegan logo or any other indication relating to the certification process itself. The applicant could simply apply for the certification mark for vegan nuts, vegan crackers and vegan muffins. The list of goods and services of an EU certification mark application must also be included in the regulations of use (

text: Article 17

text: (d) EUTMIR). The two lists (goods and services filed in the application and those listed in the regulations of use) must be identical.

text: 3.4 Regulations governing use

text: The regulations governing use must be filed within 2 months of the application for the certification mark (

text: Article 84(1)

text: EUTMR) and their content must comply with

text: Article 17

text: EUTMIR. For complete details regarding the content of the regulations of use, see the Guidelines, Part B, Examination, Section 2, Formalities, paragraph 8.3.3.1, Content of the regulations of use. The substantive examination of the application will begin once the regulations governing use have been received. The Office recommends the use of its template (available at https:// www.euipo.europa.eu/en/trade-marks/before-applying/types-of-trade-marks), which guides applicants through the process of drafting the regulations governing use. The regulations governing use constitute a mandatory part of the certification mark. In particular, they are an essential element of the examination since they contain information on the certification scheme and thus define its subject matter. They must reflect the specific kind of mark claimed in the application and be drafted in a clear and accessible manner (see paragraph 5.3 below). If the regulations governing use are amended, the complete modified version of the text must be submitted to the Office (

text: Article 88(1)

text: EUTMR), which will verify that the modifications satisfy the requirements of

text: Article 84(2)

text: EUTMR and

text: Article 17

text: EUTMIR and do not raise any grounds for refusal applicable to EU certification marks referred to in

text: Article 85

text: EUTMR. When the regulations governing use refer to standards established in official or generally available sources, any changes of these standards automatically apply to the regulations governing use. In such cases, it is not necessary to amend the regulations governing use already filed at the Office.

text: 4 Specific Requirement as Regards Ownership

text: Any natural or legal person can apply for and be an owner of an EU certification mark.

text: Article 83(2)

text: EUTMR clarifies that this includes ‘institutions, authorities and bodies governed by public law’. The only, yet important, limitation is that a certification mark cannot be owned by a person running a business involving the supply of the goods and services of the kind certified (

text: Article 83(2)

text: EUTMR). The owner of a certification mark is precluded from using the mark for the certified goods or services covered. The reasons are that it would not make much sense that the proprietor certifies its own goods and services; a certifier should be neutral with respect to the business interests of the producers of the goods and the suppliers of the services it certifies. That ‘duty of neutrality’ has to be understood broadly: the proprietor must not have any economic (business) interest on the relevant market. This is, in particular, not fulfilled where: the producer of the goods or the supplier of the services to be certified, although

text: formally distinct from the owner of the certification mark, is economically linked to the latter; use of the certification mark is conditioned by use of the goods or services provided

text: by the owner of the certification mark (e.g. when a raw material is supplied by the owner of the certification mark). However, it is acceptable for the owner to provide some training on the certification scheme to its users since (and as long as) it is an economical field that is different from the goods and services of the kind certified. Non-respect of this duty of neutrality by the owner of a certification mark therefore constitutes a specific ground for revocation of the certification mark (

text: Article 91

text: EUTMR); see the Guidelines, Part D, Cancellation, Section 2, Substantive Provisions. The applicant has to include in the regulations governing use a declaration that it complies with this requirement (see

text: Article 17

text: (b) EUTMIR and the Guidelines, Part B, Examination, Section 2, Formalities, for further details). When examining an application for a certification mark, the Office will assume the applicant’s good faith in this respect and, for example, not object to the application for a certification mark where the applicant already owns a national or European Union mark that covers the goods and services to be certified. The application will, however, be rejected if it becomes evident in the course of the proceedings (e.g. from third-party observations) that the applicant actually runs a business on the relevant market.

text: 5 Examination of the Specific Grounds of Refusal

text: 5.1 Misleading as to the character or the meaning of the mark

text: Under

text: Article 85(2)

text: EUTMR, an EU certification mark application must be refused if the public is liable to be misled as regards the character or the meaning of the mark, in particular if it is likely to be perceived as something other than a certification mark. The EUTMR does not require that the depiction of the certification mark assumes a specific form or includes a specific text, such as a reference to its kind. The absence of such information does not imply that the mark will be perceived as anything other than a certification mark. The public is also liable to be misled when the sign indicates a quality that is different from or contradicts the subject of the quality standard as stated in the regulations governing use. For example, ‘ABC test pure orange juice’ for soft drinks, where the regulations governing use certify that it contains juice made from apples. To conclude, the perception of the sign by the relevant consumer is decisive. This perception will depend, on the one hand, on the sign itself and, on the other hand, on the specification of use of the mark as laid down in the regulations governing use, and the goods and services covered.

text: 5.2 Certification of geographical origin

text: Pursuant to

text: Article 83

text: EUTMR, an EU certification mark will not be capable of distinguishing goods or services certified in respect of the geographical origin. This exception should be understood as a bar to any mark applied for: where the sign will be perceived by the relevant public as an indication that the

text: goods or services at issue will be certified in respect of their geographical origin; where the Regulations of use indicate that the characteristic being certified is the

text: geographical origin of the goods or services or impose an obligation of geographical nature (e.g. the location of the place of production); where the list of goods and services explicitly specifies that the goods and

text: services have a geographical origin or comply with a PDO/PGI. A certification mark that contains an inclusion of, or reference to, a geographical indication (GI) — in its sign, list of goods and services and/or regulations governing use — will be objected to under

text: Article 83

text: EUTMR since by definition geographical indications are linked to a specific geographical origin and will be perceived as such. For more details on GIs, see Part B, Examination, Section 4, Absolute Grounds for refusal, Chapter 10, Trade marks in conflict with Geographical Indications (

text: Article 7(1)

text: (j) EUTMR).

text: However, when the reference to a geographical term does not imply any geographical origin of the goods and services the application will not fall within the scope of the objection of

text: Article 83

text: EUTMR.

text: Examples of applications refused under

text: Article 83

text: EUTMR:

text: Example of an application containing a geographical term and registered:

text: 5.3 Regulations governing use

text: Given their particular significance, the regulations governing use should be drafted in a clear and accessible manner, that is to say, with sufficient clarity and precision to enable both the Office to examine the application and the market operators to understand the requirements that must be met for using the certification mark.

text: The regulations of use must comply with the formalities requirements (see the Guidelines, Part B, Examination, Section 2, Formalities, paragraph 8.3.3, Regulations governing use of certification marks), reflect the kind of mark being applied for (see paragraph 5.1 above regarding misleading applications) and comply with public policy and accepted principles of morality.

text: 5.3.1 Compliance with public order

text: The regulations governing use must comply with public policy and accepted principles of morality. This public order requirement under

text: Article 85(1)

text: EUTMR applies specifically to the regulations governing use. It applies in addition to

text: Article 7(1)

text: (f)

text: EUTMR (which relates in the first place to the sign applied for) and thus needs to be assessed separately and specifically with respect to the regulations governing use submitted by the applicant. By way of example, regulations governing use would appear to be in breach of

text: Article 85

text: EUTMR where: 1. the applicant would not be entitled to carry out the certification (e.g. for lack of compliance with statutory provisions); 2. the authorisation or conditions of use discriminate between market operators without due justification (such as a lack of objective criteria or the application of inadmissible criteria).

text: 5.3.2 Remedies

text: In some cases, it will be possible to modify the regulations governing use in order to remove a ground for refusal of an EU certification mark application (

text: Article 85(3)

text: EUTMR) raised by the Office under

text: Articles 85(1)

text: and (2) EUTMR. The applicant has to submit new and complete regulations governing use. The Office will then assess if the objection can be waived as a consequence of the content of the new text.

text: 6 Specificities as regards examination of the general grounds for refusal

text: In addition to the specific grounds for refusal applicable to certification marks, applications for this kind of mark need also to be examined with regard to the absolute grounds for refusal listed in

text: Article 7(1)

text: EUTMR (

text: Article 85(1)

text: EUTMR). This means that EU certification mark applications will, like any other EUTM application, be assessed on all general grounds of refusal laid down in

text: Article 7(1)

text: EUTMR (27/10/2021, R 1410/2019‑5, Manuka honey, § 18-28, 37; 27/10/2021, R 2110/2019‑5, Bio-Mineralwasser I, § 15-25; 27/10/2021, R 2112/2019‑5, bio mineralwasser (fig.) II, § 15-25). Example of a refused application under

text: Article 7(1)

text: (b) and (c) EUTMR.

text: When assessing the general grounds of refusal of

text: Article 7(1)

text: (b), (c) and (d) EUTMR, the specific function of certification marks – that is to distinguish goods or services certified by one certifier (i) from those that are not certified at all and (ii) from those certified by another certifier – must always be kept in mind. Likewise, to the extent that

text: Article 7(1)

text: Article 7(3)

text: EUTMR) also apply to certification marks, any claim of distinctiveness acquired through use will need to be supported by evidence showing that use of the mark has been made and that the mark is in fact recognised on the relevant market as a certification mark. The same applies to

text: Article 7(1)

text: (g) EUTMR to the extent that it remains applicable in addition to the specific provision of

text: Article 85(2)

text: EUTMR. When assessing whether or not the public is liable to be misled as regards the character or the meaning of the mark, the regulations governing use must also be taken into account. For example, if the characteristic to be certified is the kosher nature of the goods, and the certification mark applied for designates food that by its very nature cannot be kosher (e.g. shellfish), an objection under

text: Article 7(1)

text: (g) EUTMR should be raised since there is no possibility of non-deceptive use of the certification mark. When the sign applied for contains a geographical indication, an objection will be raised under

text: Article 83(1)

text: EUTMR only (and not under

text: Article 7(1)

text: (j) EUTMR) given that a limitation of the goods can never overcome the prohibition of certification of geographical origin laid down in

text: Article 83(1)

text: EUTMR.