Registration of marksi RegistrabilityTypes of marks
Any sign may be registered as an EUTM if it can distinguish the goods or services of one business enterprise from those of another, and if it can be represented in a clear, precise, self-contained, easily accessible, intelligible, durable, objective, unambiguous and consistent way.
An EUTM may indicatively consist of one or more of the following:
- words affixed to products or used in the course of providing services;
- letters, abbreviations, numbers, names (both first names and surnames);
- slogans and short phrases;
- colours and colour combinations;
- designs, including 3D designs, provided they are distinctive and not of a merely decorative nature;
- the shape of the product, or of its packaging, product labels and product trade dress;
- company names and distinctive titles used to identify the premises where goods or services are offered to consumers;
- surface designs, colour patterns and design patterns, provided they are distinctive; or
- collective marks and certification marks.
Non-traditional marks, such as sounds, tastes, smells, touch, position marks, 3D representation of a state, holograms or movement marks, are in principle registrable, provided they are distinctive and capable of being represented in a clear, precise, self-contained, easily accessible, intelligible, durable, objective, unambiguous and consistent way.Absolute grounds
Absolute grounds for rejecting an EUTM application include (1) lack of distinctiveness, (2) the mark being generic or descriptive, (3) commonplace, (4) deceptive, (5) functional, either technically or aesthetically, or (6) contrary to public policy, or morality. In addition, marks are excluded from registration if they are similar to designations of origin, geographical indications, traditional terms of wines, guaranteed traditional specialities or plant varieties that are protected under EU law or under international conventions to which the EU is a party.
Absolute grounds are assessed in view of the goods or services applied for (i.e., a mark may be descriptive in respect of some goods but not of others), as well as in view of the perception of the public (i.e., whether the public perceives a mark as an indication of origin or not). Although the same criteria are used for all types of marks, public perception may differ for certain types of marks. Because of linguistic or cultural differences among the Member States, a mark may be descriptive, or commonplace, or may lack distinctiveness in some Member States, but not in all of them. Owing to the unitary nature of the EUTM, a mark qualifies for registration as an EUTM only if it is free of any objections based on absolute grounds in all Member States. Therefore, if a mark is descriptive in only one Member State, it cannot be registered as an EUTM and the application will fail.
Acquired distinctiveness through use is taken into account to compensate for lack of inherent distinctiveness, descriptiveness, or the fact that a mark is commonplace. However, acquired distinctiveness must exist throughout the EU and must be evidenced in respect of every single Member State.
The following are other notable examples from case law on absolute grounds.
- Adidas’ much-disputed figurative mark consisting of ‘three black parallel stripes before a white background’ was cancelled by the EUIPO Boards of Appeal for lack of (inherent or acquired) distinctiveness. Interestingly, the decision noted that it was unclear whether the mark actually used in the market by Adidas was always ‘three parallel black stripes before a white background’ or ‘two white (or other light colour) stripes before a black (or other dark-coloured) background’.
- Word marks like ‘Biomild’ for foodstuffs such as yogurt and ‘Doublemint’ for chewing gum were found to be descriptive (biological and mild, and double mint) and were refused registration. Combinations of descriptive terms in a single new word cannot escape the absolute ground of descriptiveness, unless there is a perceivable difference among the combination and its parts.
- The following word marks have been refused registration for lack of distinctiveness: ‘eco’ (denoting ‘ecological’), ‘medi’ (denoting ‘medical’) and ‘universal’ (denoting ‘goods fit for universal use’).
- The mark ‘Revolution’ for financial consulting services in Class 36 was found to lack distinctiveness and was refused registration.
- The mark ‘Restore’ for surgical and medical instruments was found to be descriptive.
- The mark ‘Caffè Nero’ for coffee products and cafeteria services was refused registration on the ground that, in Italian, ‘caffè nero’ means ‘black coffee’ (i.e., coffee without sugar or milk). Therefore, if an EUTM is intended to apply to all Member States, lack of distinctiveness or descriptiveness in only one Member State may be fatal.
- The mark ‘Deluxe’ for several goods and services in Classes 9, 35, 37, 39, 40, 41, 42 and 45 was refused registration as merely laudatory, descriptive and non-distinctive; the CJEU affirmed this decision.
- The mark ‘Real’ for foodstuffs in Classes 29, 30 and 31 was refused registration as a descriptive term; the GCEU held that ‘Real’ had the meaning ‘not artificial or simulated, genuine’ and that it was therefore descriptive in connection to foodstuffs.
An application for an EUTM can be filed either electronically (online) or in writing, sent by fax or mail. The application contains details of the applicant, its professional representative acting on its behalf before EUIPO, as well as the mark applied for and the goods or services associated with it. The application is accompanied by a power of attorney appointing the professional representative. The power of attorney and the application need no legalisation, neither certification, nor the Hague Convention Apostille. If the mark includes colours, the applicant is required to identify the colours by reference to a generally accepted colour index, such as the Pantone Index. If the mark includes figurative elements, the applicant can, on an optional basis, identify these figurative elements by reference to EUIPO’s Figurative Classification Manual (version 3.0, 15 March 2013), which is based on the codes provided in the Vienna Convention (1973) on the classification of figurative elements of marks (seventh edition, 2012).
The goods or services applied for are identified by reference to the Nice Classification Agreement (1957), currently consisting of 45 classes.
Applications are assessed by a single examiner. If the examiner finds the application acceptable, it is published through the EUIPO website. Upon publication, the application is open to opposition for a period of three months. If no opposition is filed, the mark is registered. The whole process from the filing of the application to registration usually requires a period of four months, if no obstacles arise. An examiner’s decision rejecting an application can be appealed to the EUIPO Boards of Appeal within two months of its notification to the applicant.ii Relative grounds – prior rights
Prior rights include:
- earlier applications or registrations of EUTMs;
- earlier applications or registrations of national trademarks in the EU Member States;
- earlier applications or registrations of international trademarks filed with WIPO designating the EU or a Member State;
- earlier well-known marks in the sense of Article 6 bis of the Paris Convention;
- earlier non-registered national signs used in the course of trade in one or more Member States of the EU; and
- earlier designations of origin, geographical indications and applications thereof.
EUIPO does not carry out an ex officio search for prior rights on its own initiative. As a result, prior rights must be invoked by way of formal opposition proceedings, otherwise an EUTM application will succeed in being registered, even if it is confusingly similar to an earlier mark.
There follow some notable recent cases on likelihood of confusion.Cases where likelihood of confusion was established
- A figurative and position mark consisting of two parallel stripes appearing on athletic shoes was found to be confusingly similar to the Adidas earlier three-parallel-stripes mark, although the stripes had a different orientation in each case.
- A figurative mark consisting of an animal (a member of the cat family) jumping to the right was found to be confusingly similar to an earlier mark consisting of a member of the cat family jumping to the left. The fact that the animals were facing towards different directions was insufficient to render them dissimilar. Both marks were used in connection to clothing in Class 25. The GCEU rejected, on the evidence, the argument that the image of a jumping cat is widely used in connection to clothing and that it therefore has a weak distinctive character precluding the likelihood of confusion.
- The marks ‘Smith’ and ‘Anna Smith’, both for clothing and leather products in Classes 18 and 25, were found to be confusingly similar, although the common element ‘Smith’ was a common surname.
- The marks ‘Aquaperfect’ and ‘Waterperfect’, both in Class 7, were found to be confusingly similar because of their conceptual similarity, as ‘aqua’ means ‘water’ in Latin and is considered to be a Latin vocabulary term that European consumers clearly understand. In another similar case, likelihood of confusion was established between the marks ‘Vitaminwater’ and ‘Vitaminaqua’ in Classes 30 and 32.
- The mark ‘Colombiano House and device’ for restaurant and food services in Class 43 was refused registration, because of an earlier protected geographical indication ‘Café de Colombia’.
- The mark ‘Beyond Retro’ for clothing in Class 25 was found to be confusingly similar to the mark ‘Beyond Vintage’ for clothing and accessories in Classes 18 and 25; however, there was no likelihood of confusion with watches and jewellery in Class 14, for which an application for ‘Beyond Vintage’ was also made, as these goods were considered to be sufficiently dissimilar to clothing in Class 25.
- The marks ‘Pentasa’ and ‘Octasa’, both for pharmaceuticals in Class 5, were found to be sufficiently similar, although their respective first parts differ.
- The marks ‘Ginraw’ and ‘Raw’, both for household and kitchen utensils and containers, glassware and other goods in Class 21, were found to be confusingly similar, as the term ‘gin’ was likely to be associated with the alcoholic beverage and was hence rather descriptive of the goods.
- The marks ‘Easy Air-tours’ and ‘Airtours’, both for transport services in Class 39, were not found to be confusingly similar, because their common components were descriptive terms. Similarly, the following pairs of marks were not found to be confusingly similar, because the common elements they shared were merely descriptive:
- ‘Real estate services’ was found to be dissimilar to ‘financial and banking services’, although ‘real estate appraisal services’ was found to be similar to ‘financial services’.
- In other cases, ‘retail services’ was found to be dissimilar to ‘distribution services’; ‘watches and jewellery’ in Class 14 was found to be dissimilar to ‘clothing’ in Class 25, although both are usually traded through the same channels; ‘compotes’ was found to be dissimilar to ‘dairy products’, although ‘restaurant and bar services’ was found to be similar to ‘foods and beverages’.
- The well-known mark of Calvin Klein ‘CK’ was found not to be diluted by the mark ‘CK Creaciones Kennya’ (both for clothing and leather goods in Classes 18 and 25), because the two marks were so dissimilar (although CK was incorporated as such in the later mark) that a link between them could not possibly be established.
- In a similar case, the marks ‘Kinder’ (for food products in Class 30) and ‘Ti Mi Kinder Joghurt’ (for yogurt-based products in Class 29) were so dissimilar that consumers could not possibly establish a link between the two, although ‘Kinder’ was incorporated as such in the later mark. In these cases, the CJEU reasoned that, in assessing the level of similarity of the marks, the reputation of the earlier mark shall not be taken into account and that its reputation will be considered only at a later stage, to assess the likelihood that consumers might make a link between the two marks, but this later stage will not follow at all, unless sufficient similarity is established in the first place.
- The well-known ‘Volvo’ mark was found not to be diluted by the mark ‘Lovol’ in Classes 7 and 12 because the two marks were sufficiently dissimilar, although they shared the letters ‘v’, ‘o’ and ‘l’, as well as the syllable ‘vol’.
- The mark ‘Vina Sol’ (meaning vineyard of the sun in Spanish) was found not to be diluted by the mark ‘Sotto il Sole’ (meaning under the sun in Italian). Although the goods associated with the respective trademarks were identical, and although the earlier mark enjoyed a reputation, likelihood of dilution was not established because the notion of the ‘sun’ was widely used by many other wine producers and was therefore of merely low distinctiveness.
- The mark ‘MacCoffee’ for food and beverages in Classes 29, 30 and 32 was found to dilute the marks ‘McDonald’s’, ‘McNuggets’, ‘McFlurry’, ‘McChicken’, etc.
- The Adidas figurative mark consisting of three parallel oblique stripes was found to be diluted by a trademark consisting of two parallel oblique stripes filed by Shoe Branding, although the stripes were oriented in a different direction in each case.
Inter partes proceedings before EUIPO include (1) oppositions to EUTM applications; (2) applications for invalidity of registered EUTMs; and (3) applications for revocation of registered EUTMs.Oppositions to EUTM applications
Since EUIPO does not take into account earlier rights on its own initiative, opposition proceedings are the only means of invoking such earlier rights to prevent the registration of an EUTM application. The time limit to file an opposition against an EUTM application is three months from its publication.Applications for invalidity of registered EUTMs
If an application for an EUTM has been registered, although there were absolute or relative grounds that should have resulted in its rejection, then this registration is open to cancellation (invalidity). There is no time limit restricting the filing of an application for invalidity. The effects of invalidity are retrospective and date back to the filing of the contested EUTM registration.Applications for revocation
A registered EUTM can be revoked if:
- the mark has not been used for a period of five consecutive years and there are no proper reasons justifying non-use;
- because of acts or inactivity of the proprietor, the mark has become a common name in trade for a product or service for which it is registered; or
- as a result of the use made of it by its proprietor, the mark has become misleading to the public.
There is no time limit for filing an application for revocation.
The effects of revocation are retrospective and date back to the date of filing of the application for revocation, or to another date fixed by the decision revoking the registration.
In respect of the form of the proceedings for oppositions, applications for invalidity and revocations, see Section II.ii.iv Appeals
Decisions of the EUIPO Operations Department on oppositions, applications for invalidity or revocations, as well as decisions of the examiners on absolute grounds preventing trademark registration, can be appealed before the EUIPO Boards of Appeal, which can review cases on matters of both fact and law. The decisions of the EUIPO Boards of Appeal can be appealed before the GCEU on matters of law only. The judgments of the GCEU can be appealed before the CJEU on matters of law only (see Section II.ii).