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

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

1 Reasoned Objection

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.

2 Dialogue with the applicant

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, C‑104/00 P, Companyline, EU:C:2002:506, § 28). No observations submitted by the applicant

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

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

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

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).

3 Decision

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.

4 European criteria

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.

4.1 Languages

4.1.1 Glossary

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

EU national languages

EU national languages comprise two different groups.

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.

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).

EU regional languages

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, T‑765/16, 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).

Non-EU languages

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

4.1.2 Relevant languages in AG examination

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.

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.

4.1.2.1 EU national languages

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, T‑236/12, 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, T‑534/10, Hellim, EU:T:2012:292, § 38). The same applies to Luxembourgish which has the status of an official language in Luxembourg.

4.1.2.2 EU regional languages and non-EU languages

The examination of absolute grounds is not limited to EU national languages (13/12/2018, T‑830/16, PLOMBIR, EU:T:2018:941, § 53; 13/09/2012, T‑72/11, 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, T‑878/16, KARELIA, EU:T:2017:702, § 27; 25/11/2015, T‑520/14, RACE GTP, EU:T:2015:884, § 29; 25/11/2015, T‑529/15, 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, T‑765/16, 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.

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.

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, T‑432/16, медве́дь (fig.), EU:T:2017:527; 13/12/2018, T‑830/16, 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.

Table 3: Applications refused

4.2 The baseline

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, T‑226/07, Pranahaus, EU:T:2008:381, § 36; 18/11/2015, T‑558/14, 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, T‑281/09, 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.

4.3 The relevant part of the EU

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, T‑464/20, YOUR DAILY PROTEIN (fig.), EU:T:2021:421, § 60-62 and 09/03/2022, T‑204/21, 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.

4.3.1 Relevant territory and objections based on EU national languages

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.

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

of such terms are: ○ ‘forever’ and numbers below 10 (16/01/2014, T‑528/11, Forever, EU:T:2014:10, § 68); ○ ‘baby’ (05/07/2012, T‑466/09, Mc.Baby, EU:T:2012:346); ○ primary colours (27/06/2013, T‑367/12, MOL Blue Card, EU:T:2013:336; 28/09/2011, T‑356/10, Victory Red, EU:T:2011:543); ○ ‘champion’ (01/06/2016, T‑34/15, CHEMPIOIL / CHAMPION et al., EU:T:2016:330). English is widely understood in some Member States and therefore in those

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, T‑253/20, It’s like milk but made for humans, EU:T:2021:21, § 35). Specific knowledge of English can be acknowledged for certain professionals. The

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, T‑242/11, 3D eXam, EU:T:2012:179, § 26). In addition: ○ English is very often used in commercial communications (09/03/2022, T‑204/21, Rugged, EU:T:2022:116, § 56). ○ The use of English is common in the financial, electronics and telecommunications sectors (26/09/2012, T‑301/09, 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, T‑242/11, 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, T‑204/21, Rugged, EU:T:2022:116, § 56-58).

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

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

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, T‑432/16, медве́дь (fig.), EU:T:2017:527; 13/12/2018, T‑830/16, PLOMBIR, EU:T:2018:941) .

5 Scope of Objections to the Goods and Services

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, C‑282/09 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, C‑282/09 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, T‑501/13, 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, T‑658/18, 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

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

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, C‑437/15 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

in 12/12/2019, T‑747/18, SHAPE OF A FLOWER (3D), EU:T:2019:849; 11/04/2019, T‑223/17, 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

in 19/12/2019, T‑270/19, 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, C‑597/12 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, T‑235/17, 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, T‑359/99, 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, T‑355/00, Tele Aid, EU:T:2002:79, § 38‑39 (relating to a number of

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:

6 Timing of Objections

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.

7 Disclaimers

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.

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

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

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

Part B Examination Section 4 Absolute grounds for refusal Chapter 2

1 General Remarks

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;

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.

1.1 Signs

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, T-7/09, 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

shapes of a transparent bin with a multitude of different appearances (25/01/2007, C-321/03, Transparent bin, EU:C:2007:51, § 35, 37).

1.2 Distinguishing character

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’.

1.3 Representation on the Register

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, C-273/00, 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.

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.

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.

2.1 Shape marks

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;

a photographic reproduction.

The graphic or photographic reproduction may contain different views. Where the representation is not provided electronically, it may contain up to six different views.

2.2 Position marks

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.

2.3 Pattern marks

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.

2.4 Colour marks

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, C-49/02, 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):

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:

2.5 Sound marks

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

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, C‑283/01, Musical notation, EU:C:2003:641, § 59). Onomatopoeia

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, C‑283/01, Musical notation, EU:C:2003:641, § 60).

Musical notes alone

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, C‑283/01, Musical notation, EU:C:2003:641, § 61).

2.6 Motion marks

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;

a series of still sequential images showing the movement; the images may be

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.

Examples of acceptable representations for motion marks from CP11 ( ).

Examples of unacceptable representations for motion marks.

2.7 Multimedia marks

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 ( ):

2.8 Hologram marks

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.’

2.9 Other marks

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’.

2.9.1 Layout of a retail store

In its judgment of 10/07/2014, C-421/13, Apple Store, EU:C:2014:2070, § 19, the Court of Justice found that a representation that depicts the layout of a retail store

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.

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.

2.9.2 Smell/olfactory marks

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.

Chemical formula

Only specialists in chemistry would recognise the odour in question from such a formula.

Representation and description in words

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).

In its judgment of 12/12/2002, C-273/00, 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, T-305/04, Odeur de fraise mûre, EU:T:2005:380, § 34).

2.9.3 Taste marks

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)).

2.9.4 Tactile marks

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)).

3 Relationship with Other EUTMR Provisions

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.

Part B Examination Section 4 Absolute grounds for refusal Chapter 3

1 General remarks

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, C‑468/01 P - C‑472/01 P, Tabs (3D), EU:C:2004:259, § 32; 21/10/2004, C‑64/02 P, Das Prinzip der Bequemlichkeit, EU:C:2004:645, § 42; 08/05/2008, C‑304/06 P, Eurohypo, EU:C:2008:261, § 66; 21/01/2010, C‑398/08 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, C‑311/11 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,T‑555/18, 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, T‑190/05, 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, T‑470/09, 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, T‑145/12, Eco Pro, EU:T:2013:220, § 29-32).

2 Virtual goods and services in a virtual environment

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).

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;

virtual goods that depict and emulate the functions of real-world goods;

services in a virtual environment that emulate a real-word service in a virtual

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, T‑1163/23, 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.

3 Word elements

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

goes beyond that of the ordinary (12/06/2024, T-343/23, Beyond Chocolate, EU:T:2024:380, § 18); ECO as denoting ‘ecological’ (24/04/2012, T‑328/11, EcoPerfect, EU:T:2012:197,

§ 25; 15/01/2013, T‑625/11, EcoDoor, EU:T:2013:14, § 21);

FLEX and FLEXI as referring to ‘flexible’ (13/06/2014, T‑352/12, Flexi,

EU:T:2014:519, § 20-21); GREEN as being ‘environmentally friendly’ (27/02/2015, T‑106/14, Greenworld,

EU:T:2015:123, § 24); MEDI as referring to ‘medical’ (12/07/2012, T‑470/09, Medi, EU:T:2012:369);

MULTI as referring to ‘much, many, more than one’ (17/11/2005, R 904/2004-2,

MULTI); MINI as denoting ‘very small’ or ‘tiny’ (17/12/1999, R 62/1999-2, MINIRISC);

MEGA as denoting ‘big’ (28/04/2015, T‑137/13, MEGARAIL, EU:T:2015:232, § 38);

MY as indicating that the product meets the individual taste and preference

(20/12/2023, T-189/23, my mochi (fig.), EU:T:2023:853, § 26). Premium/PREMIUM as referring to ‘best quality’ (22/05/2012, T‑60/11, Suisse

Premium, EU:T:2012:252, § 46-49, 56, 58; 17/01/2013, T‑582/11 & T‑583/11, Premium XL / Premium L, EU:T:2013:24, § 26); PRO as an indication that the designated goods are intended for ‘professionals’

or are ‘supporting’ something (25/04/2013, T‑145/12, Eco Pro, EU:T:2013:220, § 29-32); PLUS as denoting ‘additional, extra, of superior quality, excellent of its kind’.

(15/12/1999, R 329/1999-1, PLATINUM PLUS); SUPER for highlighting the ‘positive qualities of the goods or services’ (judgments of

19/05/2010, T‑464/08, Superleggera, EU:T:2010:212, § 23-30; 20/11/2002, T‑79/01 & T‑86/01, Kit Pro / Kit Super Pro, EU:T:2002:279, § 26); ULTRA as denoting ‘extremely’ (09/12/2002, R 333/2002-1, ULTRAFLEX), exalting

a quality of the product (15/10/2019, T-434/18, Ultrarange, EU:T:2019:746, § 32) or on its own as a synonym of the term ‘extra’ (12/06/2024, T-170/23, ULTRA (fig.), EU:T:2024:375, § 47-52). UNIVERSAL as referring to goods that are ‘fit for general or universal use’

(02/05/2012, T‑435/11, UniversalPHOLED, EU:T:2012:210, § 22, 28).

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, T‑338/11, 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, C‑404/02, Nichols, EU:C:2004:538, § 26, 30), and the names of

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.

4 Single letters

4.1 General considerations

In its judgment of 09/09/2010, C-265/09 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

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.

4.2 Examples

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.

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

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).

5 Slogans: assessing distinctive character

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, C-311/11 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, C-398/08 P, Vorsprung durch Technik, EU:C:2010:29, § 47; 13/04/2011, T-523/09, 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

introduces elements of conceptual intrigue or surprise, so that it may be perceived

as imaginative, surprising or unexpected, and/or has some particular originality or resonance, and/or

triggers in the minds of the relevant public a cognitive process or requires an

interpretative effort. In addition to the above, the following characteristics of a slogan may contribute towards a finding of distinctiveness: unusual syntactic structures;

the use of linguistic and stylistic devices, such as alliteration, metaphors, rhyme,

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, T-88/06, 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.

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, C-311/11 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, T-609/13, SO WHAT DO I DO WITH MY MONEY, EU:T:2015:54, § 27; 29/01/2015, T-59/14, 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.

Some examples of accepted slogans

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)).

6 Simple figurative elements

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.

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, T‑304/05, Pentagon, EU:T:2007:271, § 22).

Examples of refused trade marks

Example of an accepted trade mark

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).

7 Commonplace figurative elements

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.

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.

The following representation of a vine leaf is not distinctive for wine:

Similarly, the following representation of a cow for milk products is not distinctive:

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).

8 Typographical symbols

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

9 Pictograms

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

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).

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.)).

Examples of refused trade marks

Example of accepted trade marks

10 Common/non-distinctive labels

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.

See the following examples:

In the same way, the following marks were rejected.

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

at least strongly alludes to the ingredients of some of the claimed goods, such as, for example, fruit juices.

11 Shape marks

11.1 Preliminary remarks

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, T-194/01, 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, C-136/02 P, Torches, EU:C:2004:592, § 30). Shape marks can be grouped into three categories: shapes unrelated to the goods and services themselves;

shapes that consist of the shape of the goods themselves or part of the goods;

the shape of packaging or containers.

11.2 Shapes unrelated to the goods or services themselves

Shapes that are unrelated to the goods or services themselves (e.g. the Michelin Man) are usually distinctive.

Accepted trade marks

11.3 Shape of the goods themselves or shapes related to the goods or services; shape of the packaging or containers

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, T-152/07, Uhr, EU:T:2009:324; 04/05/2017, C-417/16 P, DEVICE OF A SQUARE-SHAPED PACKAGING (fig.), EU:C:2017:340).

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.

For a shape that is the shape or packaging of the goods applied for, the examination should be conducted in the following steps.

Step 2: Assessment of the distinctiveness of the shape itself

Step 3: Identification of the elements of the shape mark

Step 4: Assessment of the distinctiveness of the sign as a whole

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, T-30/00, red-white

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

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, C-136/02 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

of a number of shapes in an area where there is a huge diversity of designs (07/10/2004, C-136/02 P, Torches, EU:C:2004:592, § 32; 07/02/2002, T-88/00, Torches, EU:T:2002:28, § 37). Functional shapes or features of a shape mark will be perceived by the consumer

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, T-30/00, 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

11.3.1 Elements and factors affecting the distinctiveness of the sign as a whole when the shape is non-distinctive (CP9)

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, T‑137/12, 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;

colours (single and colour combinations);

a combination of the above.

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;

contrast of the element with respect to the shape;

position of the element on the shape.

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

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.

11.3.1.1.1 Size/proportion

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

to render the sign distinctive as a whole. No specific proportions between the elements and the shape are required.

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.

Distinctive example

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.

Non–distinctive example

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.

Distinctive examples

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.

Non-distinctive examples

11.3.1.1.2 Contrast

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

can be achieved by the use of different shades of colours or by embossing/engraving/ debossing certain elements on the specific goods.

1. Colour contrast

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.

Distinctive examples

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.

Non-distinctive examples

2. Engraving/Embossing/Debossing

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,

making them harder to perceive and be identified. Nevertheless, engravings are frequently used to distinguish shape marks.

The effect of engraving/embossing/debossing may influence the identification of the element and the overall assessment of the distinctiveness of the sign.

Distinctive examples Non-distinctive examples

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.

11.3.1.1.3 Position

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.

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.

Distinctive examples Non-Distinctive examples

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.

11.3.1.2 Colours

The situations in which colours cannot provide distinctiveness to the goods can be the following:

in many instances, a colour would merely be a decorative element of the goods or

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);

a colour can be technically functional (e.g. the colour red for fire extinguishers,

various colours used for electric cables); a colour may also be usual (e.g. again, red for fire extinguishers);

a colour may indicate a particular characteristic of the goods, such as a flavour

(yellow for lemon flavour, pink for strawberry flavour). See judgment of 03/05/2017, T‑36/16, 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).

A colour is not normally inherently capable of distinguishing the goods of a particular undertaking (06/05/2003, C‑104/01, Libertel, EU:C:2003:244, § 65). Therefore, a single colour will in principle not be distinctive for any goods and services except under

exceptional circumstances. In all cases, the examination will require a case-by-case analysis.

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.

Non-distinctive examples

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.

Distinctive example Non-distinctive example

11.3.1.3 Combinations of factors and elements

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

abovementioned factors are relevant to determining the impact of the elements on the distinctiveness of the sign.

In all situations, the distinctiveness of the sign will depend on the overall impression produced by the combination of those factors and elements.

11.3.1.3.1 Combination of factors

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.

Non-distinctive examples Distinctive example

11.3.1.3.2 Combination of non-distinctive elements

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.

Non-distinctive example

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.

Distinctive example

11.3.1.3.3 Combination of distinctive and non-distinctive verbal/figurative elements and colours

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.

Distinctive example

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.

Non-distinctive example

11.3.2 Shape of the goods themselves or shapes related to the goods or services

11.3.2.1 The specific case of toys, dolls and play figures

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.

Rejected toy shapes

Accepted toy shapes

11.3.2.2 Examples of shapes of the goods themselves or shapes related to the goods or services

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).

Rejected product shapes

Accepted product shapes

Analogous criteria, mutatis mutandis, apply to shapes related to services, for example the device of a washing machine for laundry services.

11.3.3 Shape of the packaging or containers

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, C-173/04 P, Standbeutel, EU:C:2005:474).

Examples of marks for which protection was sought for the shape of the packaging

Rejected trade marks

Accepted trade marks

12 Position marks

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.

Rejected position marks

Accepted position mark

13 Pattern marks

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

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, T-329/10, 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, T-36/01, 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, C-218/01, Perwoll, EU:C:2004:88, § 53; 12/01/2006, C-173/04 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

POCKET (fig.)). The same considerations would apply to a fabric pattern with regard to services such as manufacture of fabrics.

Examples of pattern marks

Rejected pattern marks

Accepted pattern marks

14 Colour marks

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.

14.1 Single colours

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, C‑104/01, 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, C‑104/01, 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.

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, T‑97/08, Colour (shade of orange) II, EU:T:2010:396, § 44-47).

14.2 Colour combinations

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

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).

A colour can be technically functional (e.g. colour red for fire extinguishers, various

colours used for electric cables). A colour may also be usual (e.g. again, red for fire extinguishers, yellow for postal

services in many countries). A colour may indicate a particular characteristic of the goods, such as a flavour

(yellow for lemon flavour, pink for strawberry flavour). See the GREEN STRIPES ON A PIN (col.) judgment (03/05/2017, T‑36/16 , 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

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, T‑404/09 , 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.

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) .

15 Sound marks

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, T‑408/15 , 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, T‑668/19 , 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, T‑668/19 , 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);

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).

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.

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 .

Examples of non-acceptable trade marks

Examples of acceptable trade marks

16 Motion marks

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.

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).

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. These marks will not necessarily be perceived by the relevant public 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 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.

Examples of accepted trade marks

Examples of non-acceptable trade marks

17 Multimedia marks

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.

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 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).

Examples of acceptable trade marks

Examples of non-acceptable trade marks

18 Hologram marks

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).

Example of an acceptable trade mark

Part B Examination Section 4 Absolute grounds for refusal Chapter 4

1 General Remarks

1.1 The notion of descriptiveness

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, T‑311/02, Limo, EU:T:2004:245, § 30; 30/11/2004, T‑173/03, Nurseryroom, EU:T:2004:347, § 20), as well as concrete, direct and understood without further reflection (26/10/2000, T‑345/99, 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, T‑135/99, 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

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, C‑51/10 P, 1000, EU:C:2011:139, § 50). It is irrelevant whether this characteristic is commercially essential or ancillary (16/10/2014, T‑458/13, 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, C‑488/16 P, NEUSCHWANSTEIN, EU:C:2018:673, § 44) and ‘intrinsic and permanent’ with regard to that product or service (07/05/2019, T‑423/18, vita, EU:T:2019:291, § 44).

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, T‑104/11, Perle’, EU:T:2013:51,) or ‘Universaltelefonbuch’ for a universal telephone directory (14/06/2001, T‑357/99 & T‑358/99, Universaltelefonbuch, EU:T:2001:162) or constituent parts or components of the goods (15/01/2013, T‑625/11, 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, T‑320/23, 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, T‑345/99, 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, T‑61/12, 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, T‑315/03, Rockbass, EU:T:2005:211 (appeal C‑301/05 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.

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, C‑363/99, Postkantoor, EU:C:2004:86, § 102; 24/04/2012, T‑328/11, EcoPerfect, EU:T:2012:197, § 41).

Examples of ‘other characteristics’

the subject matter contained within the goods or services for which protection is

sought: (see paragraph 2.7); the identification of the targeted consumer: ‘BIMBO’ [Italian word for ‘child’] for

bread (18/03/2016, T‑33/15, BIMBO, EU:T:2016:159) or ‘ellos’ [Spanish word for ‘they/them’] for clothing (27/02/2002, T‑219/00, Ellos, EU:T:2002:44).

1.3 Common misunderstandings

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.

1.3.1 Term not used

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, C-191/01 P, Doublemint, EU:C:2003:579, § 33).

1.3.2 Need to keep free

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

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, C-108/97 & C-109/97, Chiemsee, EU:C:1999:230, § 35; 12/02/2004, C-363/99, 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, C-265/00, Biomild, EU:C:2004:87, § 42).

1.3.3 Factual monopoly

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.

1.3.4 Double meaning

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, C-191/01 P, Doublemint, EU:C:2003:579, § 32; confirmed by 12/02/2004, C-363/99, 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, T-315/03, Rockbass, EU:T:2005:211, § 56).

2 Word Marks

2.1 One word

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

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

apparatus; stents; catheters; and guide wires (17/01/2013, C-21/12 P, Restore, EU:C:2013:23). ‘CONTINENTAL’ is descriptive for ‘live animals, that is to say, dogs’ and ‘the keeping

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, T-383/10, Continental, EU:T:2013:193). ‘TRILOBULAR’ is descriptive for screws. It would be immediately perceived by

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, T-558/14, 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

(04/10/2001, C-517/99, Bravo, EU:C:2001:510).

2.2 Combinations of words

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, C-265/00, 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

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, C-265/00, Biomild,

EU:C:2004:87); ‘Companyline’ for insurance and financial affairs (19/09/2002, C-104/00 P,

Companyline, EU:C:2002:506); ‘Trustedlink’ for software for e-commerce, business consulting services, software

integration services and education services for e-commerce technologies and services (26/10/2000, T-345/99, Trustedlink, EU:T:2000:246); ‘Cine Comedy’ for the broadcast of radio and television programmes, production,

showing and rental of films, and allocation, transfer, rental and other exploitation of rights to films (31/01/2001, T-136/99, Cine Comedy, EU:T:2001:31); ‘Teleaid’ for electronic devices for transferring speech and data, repair services for

automobiles and vehicle repair, operation of a communications network, towing and rescue services and computing services for determining vehicle location (20/03/2002, T-355/00, Tele Aid, EU:T:2002:79); ‘Quick-gripp’ for hand tools, clamps and parts for tools and clamps (27/05/2004,

T-61/03, Quick-Grip, EU:T:2004:161); ‘Twist and Pour’ for handheld plastic containers sold as an integral part of a liquid

paint containing, storage and pouring device (12/06/2007, T-190/05, Twist & Pour, EU:T:2007:171); ‘CLEARWIFI’ for telecommunications services, namely high-speed access

to computer and communication networks (19/11/2009, T-399/08, Clearwifi, EU:T:2009:458); ‘STEAM GLIDE’ for electric irons, electric flat irons, electric irons for ironing clothes,

parts and fittings for the aforementioned goods (16/01/2013, T-544/11, Steam Glide, EU:T:2013:20); ‘GREENWORLD’ for, inter alia, gas fuels, fuels, electric power, gas for lighting, retail

services in the areas of fuels, transmission and transport of electrical energy, heat, gas or water (27/02/2015, T-106/14, Greenworld, EU:T:2015:123); ‘Greenline’ for goods in Classes 1, 5, 6, 8, 20 and 21 that can conform to a

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

as dishwashers, washing machines, vending machines, apparatus for cooking (10/07/2014, C-126/13 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, T-359/99, 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;

MADRIDEXPORTA for Classes 16, 35, 36, 38, 39, 41 and 42 (16/09/2009,

T-180/07, Madridexporta, EU:T:2009:334); DELI FRIENDS for Classes 29, 30 and 35.

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, T-105/06, WinDVD Creator, EU:T:2007:309, § 34). ‘HIPERDRIVE’ is considered descriptive of the intended purpose of setting devices

for tools, despite the misspelling of the adjective ‘hyper’ as ‘hiper’ (22/05/2014, T-95/13, Hiperdrive, EU:T:2014:270, § 33-42). ‘CARBON GREEN’ is descriptive for reclaimed rubber, namely, recycled

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, T-294/10, 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, T-565/10, 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.

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

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, T-497/11, Euro

automatic paiement, EU:T:2012:402, combination of English and French terms).

2.3 Misspellings and omissions

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);

‘Xpert’ (27/07/1999, R 230/1998-3);

‘Easi-Cash’ (20/11/1998, R 96/1998-1);

‘Lite’ (27/02/2002, T-79/00, Lite, EU:T:2002:42);

‘Rely-able’ (30/04/2013, T-640/11, Rely-able, EU:T:2013:225);

‘FRESHHH’ (26/11/2008, T-147/06, Freshhh, EU:T:2008:528).

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;

they are capable of changing the meaning of the word element or require some

mental effort from the consumer in order to make an immediate and direct link with the term that they supposedly refer to.

The following marks were refused.

However, the following marks were accepted.

2.4 Abbreviations and acronyms

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, T-352/12, 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, T-367/02 – T-369/02, SnTEM, SnPUR & SnMIX, EU:T:2005:3);

TDI 03/12/2003, T-16/02, TDI, EU:T:2003:327 (appeal C-82/04 P was settled);

LIMO (20/07/2004, T-311/02, Limo, EU:T:2004:245);

BioID (05/12/2002, T-91/01, BioID, EU:T:2002:300 (appeal C-37/03 P set aside the

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

word combination together are intended to clarify each other and to draw attention to the fact that they are linked (15/03/2012, C-90/11 & C-91/11, 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’.

2.5 Slogans

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, T-28/06, 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, C-311/11 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’,

(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,

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, T-80/07, Built to resist, EU:T:2009:332, § 27-28). Example of a non-descriptive slogan

‘WET DUST CAN’T FLY’ does not describe the way in which the cleaning

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, T-133/13, 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.

2.6 Geographical terms

2.6.1 Preliminary remarks

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, T-295/01, 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, T-197/13, MONACO, EU:T:2015:16, § 47; 25/10/2005, T-379/03, 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.

2.6.2 Assessment of geographical terms

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

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, T-197/13, MONACO, EU:T:2015:16, § 48; 25/10/2005, T-379/03, 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;

the place where the goods were conceived and designed (06/09/2018, C-488/16 P,

NEUSCHWANSTEIN, EU:C:2018:673, § 48); the place where the services are rendered;

the place that influences consumer preferences (e.g. lifestyle) by eliciting a

favourable response (15/01/2015, T-197/13, MONACO, EU:T:2015:16, § 47; 25/10/2005, T-379/03, 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, T-197/13, MONACO, EU:T:2015:16, § 49; T-379/03, 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, T-197/13, 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, C-108/97 & C-109/97, Chiemsee, EU:C:1999:230, § 31), or whether such a name may, in the

mind of the relevant public, designate the geographical origin of that category of goods or services (15/01/2015, T-197/13, MONACO, EU:T:2015:16, § 48; T-379/03, 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, C-108/97 & C-109/97, Chiemsee, EU:C:1999:230, § 32, 37; T-379/03, Cloppenburg, EU:T:2005:373, § 38), namely the degree of familiarity with: the geographical term;

the characteristics of the place designated by the term; and

the category of goods or services.

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, T-295/01, 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.

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, T-377/09, 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

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, T-295/01, 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, T-226/08, 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.

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.

The following marks were refused:

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, T‑230/06, Port Louis, EU:T:2008:443).

2.7 Terms describing subject matter in goods or services

2.7.1 General considerations

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, T-339/05, 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

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.

‘VEHICLES’ or ‘HISTORY’); and will be made on a case-by-case basis by assessing multiple factors, such as the

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).

○ 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

include printed matter. ○ Give rise to an objection — HISTORY for books — PARIS for travel guides — CAR for magazines

○ Give rise to an objection — ‘Memory’ (14/03/2011, C-369/10 P, Memory, EU:C:2011:148). Class 35: Trade fairs, advertising, retail services, import-export services.

○ Give rise to an objection — ELECTRONICA for trade fairs related to electronic goods (05/12/2000, T-32/00, 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-

downloadable). ○ Give rise to an objection — GERMAN for language courses — HISTORY for education — COMEDY for television programmes — TRANSCENDENTAL MEDITATION for education services.

The above list of Nice classes is not exhaustive, although it will apply to the

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.

2.7.2 Titles of books

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

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.

Adaptations

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.

Cultural Heritage

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’).

Time

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:

‘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.

2.8 Single letters and numerals

Single letters ( )

General considerations

In its judgment of 09/09/2010, C-265/09 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.

Examples

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, T-329/06,

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, C-51/10 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, C-265/09 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

in respect of the goods/services concerned. For instance, 1996 or 2000 for wines

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,

185/65 for tyres, 10 for women’s clothing in the UK, 32 for women’s clothing in France; quantity: 200 for cigarettes;

telephone codes: 0800 or 0500 in the UK, 800 in Italy, 902 in Spain, etc.;

the time of provision of services: 24/7;

the power of goods: 115 for engines or cars;

alcoholic content: 4.5 for lager, 13 for wines;

the number of pieces: 1 000 for puzzles.

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.

2.9 Names of colours

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

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

service (07/05/2019, T‑423/18, 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, T‑423/18, 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

tea or environmentally friendly services, while BROWN in relation to sugar describes the colour and kind of sugar.

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.

Accepted trade marks

Rejected trade marks

2.10 Names of banks, newspapers/magazines and airports

In some fields, such as banks, newspapers, magazines and airports, consumers are accustomed to recognising descriptive combinations of terms as badges of origin.

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.

The following marks were accepted.

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.

The following marks were refused.

2.11 Names of hotels

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.

2.12 Combinations of names of countries/cities with a number indicating a year

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,

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

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

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

destination. The assessment has to be made in accordance with the criteria explained under paragraph 2.6 above.

2.13 INN codes

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, T-202/04, 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,

see paragraph 2.3 above); or where an INN or a stem appears within an EUTM and the other elements of the

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

3 Figurative Marks

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.

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).

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).

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.

4 Figurative Threshold

4.1 Preliminary remarks

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.

4.2 Assessment of the figurative threshold

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

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

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

distinctiveness. These criteria are explained in the following paragraphs.

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.

4.2.1 Word elements in a mark

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.

Non-distinctive examples

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.

Distinctive examples

Combination with colour

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.

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

unusual and can be easily remembered by the relevant consumer could render a mark distinctive.

Non-distinctive examples

Combination with punctuation marks and other symbols

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.

Non-distinctive examples

Position of the word elements (sideways, upside-down, etc.)

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.

Non-distinctive examples

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.

Distinctive examples

4.2.2 Figurative elements (word element(s) and additional figurative element(s))

Use of simple geometric shapes

Descriptive or non-distinctive verbal elements combined with simple geometric shapes such as points, lines, line segments, circles, triangles, squares, rectangles,

Non-distinctive examples

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.

Distinctive examples

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.

Non-distinctive examples

Distinctive examples

The figurative element is a representation of, or has a direct link with, the goods and/or services

A figurative element is considered to be descriptive and/or devoid of distinctive character whenever:

it is a true-to-life portrayal of the goods and services;

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.

Non-distinctive examples

Distinctive examples

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.

Non-distinctive examples

Distinctive examples

The figurative element is commonly used in trade in relation to the goods and/or services applied for

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.

Non-distinctive examples

4.2.3 Word and figurative elements (stylised word elements and additional figurative element(s))

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.

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).

Non-distinctive examples

Distinctive examples

5 Descriptiveness in the context of CP11 (sound marks, motion marks, multimedia marks and hologram marks)

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.

5.1 Sound marks

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.

5.2 Motion marks

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.

5.3 Multimedia marks

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

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.

5.4 Hologram marks

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.

Part B Examination Section 4 Absolute grounds for refusal Chapter 5

Table of Contents 1 General Remarks

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, C-517/99, 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, T-322/03, 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.

2 Point in Time of a Term Becoming Customary

The customary character must be assessed with reference to the filing date of the EUTM application (05/03/2003, T-237/01, BSS, EU:T:2003:54, § 46; 05/10/2004, C-192/03 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, T-237/01, BSS, EU:T:2003:54, § 47; similarly, 21/05/2014, T-553/12, BATEAUX MOUCHES, EU:T:2014:264).

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.

3 Assessment of Customary Terms

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, T-507/08, 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, C-517/99, 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, T-322/03, 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

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, C-371/02, Bostongurka, EU:C:2004:275, § 26; 06/03/2014, C-409/12, Kornspitz, EU:C:2014:130, § 27). Where the trade mark targets both professionals and non-professionals (such as

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, C-409/12, Kornspitz, EU:C:2014:130, § 23-26). The General Court has held that Article 7(1)(d) EUTMR is not applicable when the

sign’s use in the market is by one sole trader (other than the EUTM applicant) (07/06/2011, T-507/08, 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.

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

Table of Contents

2 Shape or Other Characteristics Resulting from the Nature of the Goods..565 3 Shape or Other Characteristics of Goods Necessary to Obtain a

1 General Remarks

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, C‑205/13, Tripp Trapp, EU:C:2014:2233, § 19-20; 14/09/2010, C‑48/09 P, Lego brick, EU:C:2010:516, § 43; 06/10/2011, T‑508/08, 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, C‑337/12 P – C‑340/12 P, Surface covered with circles, EU:C:2014:129, § 55). Regulation (EU) 2015/2424 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 Article 7(1)(b) EUTMR, the average consumer’s perception is not a decisive element when applying the ground for refusal under Article 7(1)(e) EUTMR but, at most, may be a relevant criterion for the Office when identifying the sign’s essential characteristics (18/09/2014, C‑205/13, Tripp Trapp, EU:C:2014:2233, § 34). For these reasons, an objection under Article 7(1)(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

or other characteristics giving substantial value to the goods cannot be overcome by demonstrating that they have acquired distinctive character. In other words, Article 7(3) 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

provided for in Article 7(1) EUTMR may apply (06/10/2011, T‑508/08, 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 Article 7(1) EUTMR simultaneously in one communication. The reasoning of the objection will address first Article 7(1)(e) EUTMR, even if this ground for refusal may be less evident than, for instance, an objection for a lack of distinctiveness under Article 7(1)(b) EUTMR. This is justified by the fact that registration of a sign that falls foul of Article 7(1)(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 Article 7(1)(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 Article 7(1)(e) EUTMR. In these cases, an objection under Article 7(1)(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 (Article 7(1)(e)(i) EUTMR), perform a technical function (Article 7(1)(e)(ii) EUTMR) or give substantial value to the goods (Article 7(1) (e)(iii) EUTMR). The presence of one or more minor arbitrary elements, therefore, will not alter the conclusion (18/09/2014, C‑205/13, Tripp Trapp, EU:C:2014:2233, § 21-22; 14/09/2010, C‑48/09 P, Lego brick, EU:C:2010:516, § 51-52). However, an objection under Article 7(1)(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 (Article 7(1)(b) EUTMR), paragraph 10.3). The correct application of Article 7(1)(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, C‑48/09 P, Lego brick, EU:C:2010:516, § 70; 19/09/2012, T‑164/11, Knife handles, EU:T:2012:443, § 37).

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, C‑48/09 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 Article 7(1) (e) EUTMR (14/09/2010, C‑48/09 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, C‑205/13, 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 Article 7(1)(e)(ii) EUTMR, for instance, and the remaining parts merely give substantial value to the goods under Article 7(1)(e)(iii) EUTMR, neither of these two provisions bars the registration of the shape or other characteristics as a sign.

2 Shape or Other Characteristics Resulting from the Nature of the Goods

Under Article 7(1)(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.

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, C‑205/13,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, C‑205/13, Tripp Trapp, EU:C:2014:322, § 59). Even though the opinion of the Advocate General is not binding, it can give useful guidance.

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 Article 7(1)(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:

3 Shape or Other Characteristics of Goods Necessary to Obtain a Technical Result

Article 7(1)(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, C‑48/09 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 Article 7(1)(e)(ii) EUTMR if the sound does indeed repel insects.

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:

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, C‑337/12 P – C‑340/12 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, C‑48/09 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

or by examining in turn each of the components of the sign concerned (14/09/2010, C‑48/09 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, C‑237/19, 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 Article 7(1)(e)(ii) EUTMR, it is irrelevant whether the ‘essential characteristics’ or ‘most important elements’ of the sign are distinctive or not (24/09/2019, T‑261/18, 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 Article 7(1)(e)(ii) EUTMR (14/09/2010, C‑48/09 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. Article 7(1)(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, T‑601/17, 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, T‑601/17, 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

elements of the puzzle (10/11/2016, C‑30/15 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, T‑601/17, 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, T‑261/18, 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, C‑237/19, 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, C‑48/09 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 Article 7(1)(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 Article 7(1)(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.

4 Shape or Other Characteristics Giving Substantial Value to the Goods

Under Article 7(1)(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.

Whereas the same shape or another characteristic can, in principle, be protected both as a design and as a trade mark, Article 7(1)(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.

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), Article 7(1)(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, C-205/13, Tripp Trapp, EU:C:2014:2233, § 29-32).

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, C-205/13, 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 Article 7(1)(e)(iii) EUTMR (18/09/2014, C-205/13, 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. Article 7(1)(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, C‑237/19, Gömböc Kutató, EU:C:2020:296, §41). It is important to determine whether the aesthetic value of a shape (or, by analogy,

other characteristic) can, in its own right, determine the commercial value of the

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, Article 7(1)(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

Examples where it was upheld that the shape or other characteristics did not give substantial value to the goods

Part B Examination Section 4 Absolute grounds for refusal Chapter 7

1 General remarks

Article 7(1)(f) EUTMR excludes from registration trade marks that are contrary to public policy or to accepted principles of morality. Article 7(1)(f) EUTMR mirrors that of Article 6quinquies(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 Article 7(1)(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 Article 7(1)(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 Article 7(1)(f) EUTMR is not limited by the principle of freedom of expression (Article 10, 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, T-417/10, ¡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 Article 7(1)(f) EUTMR (13/09/2005, T-140/02, 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, T-140/02, Intertops, EU:T:2005:312, § 28). In its judgment of 20/09/2011, T-232/10, 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).

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, T-232/10, 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 Article 7(1)(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.

2 `Public Policy'

2.1 Concept and categories

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 Article 7(1)(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

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).

On 27/12/2001, the Council of the European Union adopted Common

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.

3 Accepted Principles of Morality

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, T-417/10, ¡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, C‑240/18 P, Fack Ju Göhte, EU:C:2020:118, § 39). The concept of morality in Article 7(1)(f) EUTMR is not concerned with bad taste or the protection of individuals’ feelings. In order to fall foul of Article 7(1)(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, C‑240/18 P, Fack Ju Göhte, EU:C:2020:118, § 42).

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, T-232/10, 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

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

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, T-232/10, 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 Article 7(1)(f) EUTMR. The examination of Article 7(1)(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

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, T-526/09, 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, T-417/10, ¡Que buenu ye! HIJOPUTA (fig.), EU:T:2012:120, § 24; 26/09/2014, T-266/13, 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 Article 7(1)(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, T-417/10, ¡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, T-526/09, 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).

4 Examples

4.1 Examples of rejected EUTM applications 4.2 Examples of accepted EUTM applications

Part B Examination Section 4 Absolute grounds for refusal Chapter 8

1 The deceptive character

The EUTMR provides protection against deceptive European Union trade marks both as an absolute ground for refusing their registration [Article 7(1)(g) EUTMR] and after registration by allowing such marks to be revoked [Article 58(1)(c) EUTMR] or declared invalid [Article 59(1)(a) EUTMR] upon application of a third party at the Office.‑ Article 7(1)(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, T‑41/10, esf école du ski français (fig.), EU:T:2011:200, § 49-50 and the case-law cited; 27/10/2016, T‑29/16, CAFFÈ NERO, EU:T:2016:635, § 48; 28/05/2021, R 406/2021‑1, MATE MATE, § 75). Article 7(1)(g) EUTMR requires the existence of actual deceit or a sufficiently serious risk that the consumer will be deceived (29/06/2022, T‑306/20, La Irlandesa, § 55; 13/05/2020, T‑86/19, BIO-INSECT Shocker, EU:T:2020:199, § 72; 02/03/2020, R 1499/2016‑G, LA IRLANDESA 1943 (fig.), § 25; 08/06/2017, C‑689/15, Gözze / VVB, EU:C:2017:434, § 54; 30/03/2006, C‑259/04, 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 Article 7(1)(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. Article 7(1)(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, Case T‑306/20, 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).

2 The test for deceptiveness

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

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

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).

2.1 Conveying a specific, clear and unambiguous message in relation to the goods and services

2.1.1 A mark can be deceptive only when it conveys a clear message regarding the characteristics of the goods and services

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 Article 7(1)(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, T‑107/23, MYBACON, EU:T:2023:769, § 54-57, 59; 13/05/2020, T‑86/19 , Bio-insect shocker, EU:T:2020:199, § 84-85; 27/10/2016, T‑29/16 , 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, T‑248/05 , I.T.@Manpower, EU:T:2008:396, § 65 & 66; 29/11/2018, T‑681/17 , 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

establish deception (24/09/2008, T‑248/05 , I.T.@Manpower, EU:T:2008:396, § 67-68; 27/06/2017, T‑327/16 , 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.

Table 4: Examples of non-deceptive trade marks (as a whole the sign does not convey specific information regarding the good(s) at stake)

In principle, a sign will be considered as clearly conveying a message indicating a characteristic of the goods and services if:

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

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).

Table 5: Example of deceptive trade marks (as a whole the sign conveys specific information regarding the good(s) at stake)

2.1.2 A mark will be deceptive only when the deceptive message relates to the goods and services as they are specified

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

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, C‑259/04, Elizabeth Emanuel, EU:C:2006:215, § 47). Article 7(1)(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

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, Case T‑306/20, 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

applied for, the mark will be found deceptive.

For example, an objection should be raised against the trade mark

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).

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).

2.2 Existence of actual deceit or a sufficient serious risk of deceit

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 Article 7(1)(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, C‑87/97, Cambozola, EU:C:1999:115, § 41; 30/03/2006, C‑259/04, Elizabeth Emanuel, EU:C:2006:215, § 47, 48-49; 27/10/2016, T‑29/16,

CAFFÈ NERO, EU:T:2016:635, § 45; invalidity 08/06/2017, C‑689/15, Gözze / VVB (Cotton Flower), EU:C:2017:434, § 54, 56‑57). The threshold for applying Article 7(1)(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

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

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

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

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.

Level of attention of the consumer

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, T‑29/16, CAFFÈ NERO, EU:T:2016:635, § 45; 26/10/2017, T‑844/16, 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, T‑107/23, MYBACON, EU:T:2023:769, § 35-41).

2.3 Examples of deceptive and non-deceptive trade marks

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 ( )

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:

Non-deceptive marks

3 Categories of deceptiveness

Trade marks may be deceptive under different circumstances, as the list included in Article 7(1)(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.

3.1 Quality and nature of the goods and services

These two categories are listed under Article 7(1)(g) EUTMR, but they often overlap and the distinction has little practical significance (see examples of this category of deceptiveness under Section 2).

3.2 Geographical origin of the goods and services

The Office will not raise an objection on the grounds of deception based upon

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 Article 7(1)(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

example, clothing articles made in Vietnam.

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.

3.3 Official approval

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.

The following are three examples where the marks concerned, although allusive or suggestive, were not found to be deceptive.

4 Relation with other EUTMR provisions

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.

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).

An originally broad category of goods and services might, after restriction, be specified in such a way as to be objected to under Article 7(1)(g) EUTMR, even though it was not originally objectionable under this ground.

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 (Article 58(1)(c) EUTMR) and invalidity based on absolute grounds (4.2.2 Invalidity (Article 59(1)(a) EUTMR).

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.

For further information regarding cancellation, please see the GuidelinesPart D, Cancellation.

Article 58(1)(c) EUTMR does not contain any reference to Article 7(1) 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.

The CJEU specifically stated that the conditions for revocation according to Article 12(2) of Directive 89/104/EEC, the wording of which is in essence identical to Article 58(1)(c) EUTMR, are the same as those for applying the absolute

grounds of deceptive marks corresponding to Article 7(1)(g) EUTMR (30/03/2006, C‑259/04, Elizabeth Emanuel, EU:C:2006:215, § 53). However, unlike Article 7(1)(g) EUTMR, the relevant point of time under Article 58(1) (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, Case T‑306/20, 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 Article 58(1)(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 [Article 7(1)(j) EUTMR], (ii) a TTW [Article 7(1)(k) EUTMR] or (iii) a TSG [Article 7(1)(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 (Article 7(1)(j) EUTMR), Chapter 11, Trade marks in conflict with traditional terms for wines (Article 7(1)(k) EUTMR) and Chapter 12, Trade marks in conflict with traditional specialities guaranteed (Article 7(1)(l) EUTMR).

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 Article 7 EUTMR, including Article 7(1)(g) EUTMR. Therefore, Article 7(1)(g) EUTMR is applied in the same manner during examination and during an invalidity action brought under Article 59(1)(a) EUTMR in relation with Article 7(1)(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, C‑689/15, 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, T‑189/07, Flugbörse, EU:T:2009:172, § 19, 28) (all referred to in 29/06/2022, T‑306/20, La irlandesa 1943 (fig.), ECLI:EU:T:2022:404, § 66-68).

Part B Examination Section 4 Absolute grounds for refusal Chapter 9

1 Introduction

Article 7(1)(h) EUTMR incorporates Article 6ter of the Paris Convention for the Protection of Industrial Property (PC) into the European Union trade mark system. Article 7(1)(i) EUTMR, on the other hand, protects badges, emblems and escutcheons that are not protected under Article 6ter PC but are of particular public interest. In accordance with Article 7(1)(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.

The objective of Article 7(1)(h) EUTMR is to prevent symbols protected under Article 6ter 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,

official signs and hallmarks indicating the control and warranty,

the armorial bearings, flags, names, abbreviations and other emblems of IGOs.

Except for state flags (Article 6ter(3)(a) PC), to enjoy such protection, these symbols need to have been communicated under Article 6ter 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 Article 6ter 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 (Article 6ter(6) PC). The protection granted under Article 7(1)(h) EUTMR extends to the protected symbols of all countries that can invoke Article 6ter PC including non-EU countries.

2.1.1 Armorial bearings, flags and other emblems

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.

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’).

Published under DE34 (flag of the federal state of Berlin) The Netherlands has requested protection for the national crown,

Published under NL48. The USA has requested protection for its official seal,

Published under US1.

2.1.2 Official signs and hallmarks indicating control and warranty

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

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:

These symbols are normally communicated through WIPO for specific products and services, such as:

2.1.3 Armorial bearings, flags, names, abbreviations and other emblems of intergovernmental organisations

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:

The European Union has requested, for instance, protection for the following signs, abbreviations and names:

2.1.4 Search for protected symbols

Relevant information about protected symbols is found in the WIPO Article 6ter 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 Article 6ter 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.

In order to fall within the scope of Article 7(1)(h) EUTMR, a trade mark must consist of or contain an identical reproduction or a ‘heraldic imitation’ of a protected symbol in accordance with Article 6ter(1)(a) and (b) PC (see paragraph 2.2.1 Identical reproduction or heraldic imitation of a protected symbol). Articles 6ter(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 Article 7(1)(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).

2.2.1 Identical reproduction or heraldic imitation of a protected symbol

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.

2.2.1.1 Identical reproduction

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.

2.2.1.2 Heraldic imitation

The prohibition against the imitation of a protected symbol applies only to imitations

from a heraldic perspective.

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, C‑202/08 P & C‑208/08 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).

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, T‑430/12, 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, C‑202/08 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 Article 6ter PC (16/07/2009, C‑202/08 P & C‑208/08 P, RW feuille d’érable, EU:C:2009:477, § 50 et seq.; 25/05/2011, T‑397/09, 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:

○ 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, T-127/02, ECA, EU:T:2004:110, § 45; 28/02/2008, T-215/06, 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, T‑413/11, 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

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

it is identifiable. A moving flag may be considered a heraldic imitation when the effect of a moving

flag is clearly represented in the trade mark and the shape and format (proportion and pattern) of the flag are visible.

2.2.1.3 Examples of heraldic imitations

Heraldic imitation found

Heraldic imitation not found

2.2.2 Additional requirements for specific protected symbols

2.2.2.1 Official signs or hallmarks indicating control and warranty

For official signs or hallmarks indicating control and warranty, Article 7(1)(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.

2.2.2.2 Armorial bearings, flags, names, abbreviations or any other emblems of an IGO and the misleading connection

For armorial bearings, flags, names, abbreviations or any other emblems of an IGO, Article 7(1)(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 (Article 6ter(1)(c) PC). Therefore, in order to determine that Article 7(1)(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

connection between the organisation concerned and the applicant.

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, T-413/11, 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, T‑413/11, 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, T‑700/20, 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

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.

The objective of Article 7(1)(i) EUTMR is to prevent badges, emblems or escutcheons that are not protected under Article 7(1)(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.

Article 7(1)(i) EUTMR protects badges, emblems or escutcheons that are not protected under Article 7(1)(h) EUTMR but that are of particular public interest. Article 7(1)(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, T‑3/12, 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, T‑3/12, MEMBER OF €e EURO EXPERTS (fig.), EU:T:2013:364, § 44). The following signs enjoy protection under Article 7(1)(i) EUTMR: the Euro symbol (€, as defined by the European Commission);

the EU symbols for ‘protected designation of origin’ and for ‘protected geographical

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 Regulation (EU) 2024/1143 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 (Article 37 among others). See also 01/12/2021, T‑700/20, Steirisches Kürbiskernöl g.g.A GESCHÜTZTE GEOGRAFISCHE ANGABE (fig.), EU:T:2021:851, § 38);

the symbols protected under the Geneva Conventions and their additional

protocols, that is to say, the red cross, the red crescent and the

red crystal emblems and their names (https://www.icrc.org/en/war-and-law/

emblem); the Olympic Symbol protected under the Nairobi Treaty on the Protection of the

Olympic Symbol (http://www.wipo.int/treaties/en/text.jsp?file_id=287432).

Article 7(1)(i) and (h) EUTMR have a similar scope of application and provide an equivalent level of protection (10/07/2013, T-3/12, MEMBER OF €e EURO EXPERTS (fig.), EU:T:2013:364, § 39; 01/12/2021, T‑700/20, Steirisches Kürbiskernöl g.g.A GESCHÜTZTE GEOGRAFISCHE ANGABE (fig.), EU:T:2021:851, § 25). Accordingly, Article 7(1)(i) EUTMR is subject to the same conditions as those governing the protection of symbols under Article 7(1)(h) EUTMR. Therefore, the rules regarding the assessment of identical reproduction and heraldic imitation under Article 7(1)(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 Article 7(1)(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 Article 7(1)(i) EUTMR. Trade marks that would fall within the scope of Article 7(1)(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).

Reproduction/heraldic imitation found

Reproduction/heraldic imitation not found

3.2.2 Examples of misleading connection

Misleading connection with the organisation

No connection with the IGO

4 Authorisation for the registration of trade marks containing protected symbols or heraldic imitations thereof

EUTM applications can be registered despite being objectionable under Article 7(1)(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 (Article 6ter(8) PC).

Part B Examination Section 4 Absolute grounds for refusal

1 Article 7()(j) EUTMR

Article 7(1)(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: Regulation (EU) 2024/1143 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, amending Regulations (EU) No 1308/2013, (EU) 2019/787 and (EU) 2019/1753 and repealing Regulation (EU) No 1151/2012 (later referred to as ‘Regulation (EU) 2024/1143’) , which entered into force on 13 May 2024 and applies from that date . Regulation (EU) 2023/2411 of the European Parliament and of the Council of

18 October 2023 on the protection of geographical indications for craft and industrial products, amending Regulations (EU) 2017/1001 and 2019/1753, (later referred to as ‘Regulation (EU) 2023/2411’), which entered into force on 16 November 2023, and is fully applicable from 1 December 2025. As a consequence, Article 7(1)(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. Article 7(1)(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 Article 7(1)(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 Regulation (EU) 2023/2411 on the protection

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 (Article 70 (2) of Regulation (EU) 2023/2411). 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 Article 7(1)(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 Article 70 of Regulation (EU) 2023/2411, existing national rights for GIs for craft and industrial products cease to exist and will not be considered for the application of Article 7(1)(j) EUTMR after that date. As regards international agreements concluded by Member States only, by analogy with the Office’s interpretation of Article 7(1)(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).

2 Geographical indications under EU regulations

‘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, Article 7(1)(j) EUTMR applies equally to both designations covered by Regulation (EU) 2024/1143 and Regulation (EU) 2023/2411, regardless of whether they are registered as PDOs, PGIs or GIs. The term GI is used hereinafter to cover PDOs, PGIs and GIs.

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, C‑312/98, Warsteiner, EU:C:2000:599, § 43-44; 08/05/2014, C‑35/13, 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 Article 7(1)(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 recital 19 of Regulation (EU) 2024/1143 and recital 15 of Regulation (EU) 2023/2411). Moreover, their protection aims to ensure fair use and prevent practices liable to mislead consumers (see recital 33 of Regulation (EU) 2024/1143 and recital 37 of Regulation (EU) 2023/2411).

3 Relevant GIs under EU Regulations

Article 7(1)(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 Regulation (EU) 2024/1143 or Regulation (EU) 2023/2411. Relevant information about registered GIs can be found in the Union register of GIs for wine, spirit drinks and agricultural products (see Article 22 in conjunction with Article 93(1) of Regulation (EU) 2024/1143) and in the Union register of GIs for craft and industrial products (see Article 37 of Regulation (EU) 2023/2411). 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 (Article 26 of Regulation (EU) 2024/1143 and Article 40 of Regulation (EU) 2023/2411) and does not extend

ipso iure to the names of subregions, subdenominations, local administrative

areas or localities in the area covered by that GI. Therefore, the Office does not object under Article 7(1)(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, T‑237/08, 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 Regulation (EC) No 1493/1999 but is no longer in force. Under Article 120(1)(g) of Regulation (EU) No 1308/2013, 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.

3.1 Relevant point in time

Article 7(1)(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

and services to the GI product specification, or to have the examination proceedings suspended. Therefore, no objection will be raised under Article 7(1)(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.

4 Situations covered by the EU regulations and absolute grounds examination

Article 31(1) of Regulation (EU) 2024/1143 and Article 44(1) of Regulation (EU) 2023/2411 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 Article 26 of Regulation (EU) 2024/1143 or Article 40 of Regulation (EU) 2023/2411. The General Court has confirmed in its judgment of 25/06/2025, T‑239/23, 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 31(1) and 26(1) of Regulation (EU) 2024/1143 or Articles 44(1) and 40(1) 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, T‑239/23, NERO CHAMPAGNE / Champagne (GI), EU:T:2025:638, § 33-34). Article 26(1) of Regulation (EU) 2024/1143 (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

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

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,

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

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. Article 40(1) of Regulation (EU) 2023/2411 (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

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 Article 40(1) of Regulation (EU) 2023/2411 is taken to also potentially apply to ‘any product or any service’ (see 25/06/2025, T‑239/23, NERO CHAMPAGNE / Champagne (GI), § 50).

subsections (a) and (b) do not refer to ‘parts or components’ which would be the

equivalent of ‘ingredient’ under Article 26(1) of Regulation (EU) 2024/1143. Although ‘parts or components’ are regulated separately under Article 41 of Regulation 2023/2411, it is in a manner that mirrors Article 40 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;

services for which the product covered by the GI is the specific object of that

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;

processed goods in which the product protected by the GI is an ingredient in the

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 Article 7(1)(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 Article 26(1) of Regulation (EU) 2024/1143 or Article 40(1) of Regulation 2023/2411 (see paragraphs 4.1 to 4.3).

4.1 Use of a GI (direct or indirect use)

Article 26(1)(a) of Regulation (EU) 2024/1143 and Article 40(1)(a) of Regulation (EU) 2023/2411 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, C‑44/17 , 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, C‑44/17 , SCOTCH WHISKY, EU:C:2018:415, § 29; 09/09/2021, C‑783/19, 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, C‑783/19, 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 Article 7(1)(j) EUTMR since they make use of a GI.

Under Article 7(1)(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 Article 7(1)(b) and (c) EUTMR and can still be objected to (as in the cases above) under Article 7(1)(j) EUTMR . If the mark consists solely of the GI, the EUTM also falls under Article 7(1)(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 Article 7(1)(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 Article 7(1)(j) EUTMR where the mark ‘uses’ the GI (seeparagraph 5), but is irrelevant for Article 7(1)(c) EUTMR . For example, an application for the word mark ‘Bergerac’ for wines will simultaneously be objected to under both Article 7(1)(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 Article 7(1)(j) EUTMR could be waived but the trade mark will still be descriptive and it will be refused under Article 7(1)(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’).

4.1.1 Exploitation, weakening, dilution or detriment to the reputation of GIs

Article 26(1)(a) of Regulation (EU) 2024/1143 and Article 40(1)(a) of Regulation (EU) 2023/2411 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 Article 26(1)(a), 2nd part, of Regulation (EU) 2024/1143 or Article 40(1)(a), 2nd part, of Regulation (EU) 2023/2411 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 (Articles 46(1)(b) and 46(2)(b) of Regulation (EU) 2024/1143 for agricultural products, Article 93(1)(b)(i) of Regulation (EU) No 1308/2013 for wine, Article 3(4) of Regulation (EU) 2019/787 for spirit drinks, and Article 6(1)(b) of Regulation (EU) 2023/2411 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 Article 26(1)(a) of Regulation (EU) 2024/1143 and Article 40(1)(a) of Regulation (EU) 2023/2411, 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, T‑239/23, 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 Article 8(6) 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 (Article 8(6) EUTMR).

4.2 Misuse, imitation or evocation of a GI

Article 26(1)(b) of Regulation (EU) 2024/1143 and Article 40(1)(b) of Regulation (EU) 2023/2411 protect PDOs/PGIs against any misuse, imitation or evocation.

4.2.1 Misuse

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.

4.2.2 Imitation/evocation

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, C‑87/97, 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, C‑87/97, Cambozola, EU:C:1998:614, § 33; 09/09/2021, C‑783/19, 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

triggered directly in his mind is that of the product whose geographical

indication is protected’ (07/06/2018, C‑44/17, SCOTCH WHISKY, EU:C:2018:415, § 51; 04/03/1999, C‑87/97, Cambozola, EU:C:1999:115, § 25; 26/02/2008, C‑132/05, Parmigiano Reggiano, EU:C:2008:117, § 44; 21/01/2016, C‑75/15, 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, C‑75/15, Viiniverla, EU:C:2016:35, § 22; 07/06/2018, C‑44/17, SCOTCH WHISKY, EU:C:2018:415, § 53; 09/09/2021, C‑783/19, 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, C‑44/17, 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.

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, C‑75/15, Viiniverla, EU:C:2016:35, § 27; 07/06/2018, C‑44/17, SCOTCH WHISKY, EU:C:2018:415, § 59; 09/09/2021, C‑783/19, 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 Article 26(1)(b) of Regulation (EU) 2024/1143 and Article 40(1)(b) of Regulation (EU) 2023/2411 to be triggered (02/05/2019, C‑614/17, queso manchego, EU:C:2019:344, § 48; 09/09/2021, C‑783/19, 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, C‑44/17, 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, C‑614/17, 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, C‑87/97, Cambozola, EU:C:1999:115; 26/02/2008, C‑132/05, Parmigiano Reggiano, EU:C:2008:117; 21/01/2016, C‑75/15, 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

link between the contested sign and the GI (09/09/2021, C‑783/19, 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 Article 7(1)(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, C‑783/19, Champanillo / Champagne, EU:C:2021:713, § 50). For further information see the Guidelines, Part C, Opposition, Section 6, Geographical indications (Article 8(6) 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, C‑783/19, 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, C‑75/15, 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, C‑251/95, 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, C‑783/19,

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

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, C‑132/05, Parmigiano Reggiano, EU:C:2008:117);

○ if the terms share characteristic roots or endings that have no particular meaning, such as in Gorgonzola/Cambozola (04/03/1999, C‑87/97, Cambozola, EU:C:1999:115) and Verlados/Calvados (21/01/2016, C‑75/15, Viiniverla, EU:C:2016:35); ○ if the terms share the same number of letters or syllables, such as Gorgonzola/ Cambozola (04/03/1999, C‑87/97, Cambozola, EU:C:1999:115); ○ where there is conceptual proximity, such as between Parmesan and Parmigiano Reggiano (26/02/2008, C‑132/05, Parmigiano Reggiano, EU:C:2008:117, § 47); this includes situations where there is conceptual proximity but no visual or phonetic similarity (07/06/2018, C‑44/17, SCOTCH WHISKY, EU:C:2018:415, § 56). The degree of proximity of the goods concerned (09/09/2021, C‑783/19,

Champanillo / Champagne, EU:C:2021:713, § 66; 26/02/2025, T‑23/24, Quevedo Port / Port, EU:T:2025:182, § 73-79), including the actual physical appearance (04/03/1999, C‑87/97, 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

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, C‑783/19, 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

be taken into account (07/06/2018, C‑44/17, 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.).

Examples of where evocation was found

Examples of where evocation was not found

4.3 Other misleading indications and practices

Article 26(1)(c) and (d) of Regulation (EU) 2024/1143 and Article 40(1)(c) and (d) of Regulation (EU) 2023/2411 protect PDOs/PGIs against a number of false or misleading indications about the origin, nature or essential qualities of products.

In the ‘Scotch Whisky’ judgment, the Court (07/06/2018, C‑44/17, SCOTCH WHISKY, EU:C:2018:415, § 61-71) addressed the issue of misleading indications. There are two points to be considered:

an indication may be considered misleading if it includes information, inter alia, in

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

into account (§ 63).

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, C‑44/17, SCOTCH WHISKY, EU:C:2018:415, § 66-67) or to the nature or essential qualities of the product (20/12/2017, C‑393/16, Champagner Sorbet / Champagne, EU:C:2017:991, § 64).

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

against the description contained in its product specification (25/06/2025, T‑239/23, NERO CHAMPAGNE / Champagne (GI), EU:T:2025:638, § 82-84).

This prohibition of ‘misleading indication’, which results from the GI regulations and is implemented through Article 7(1)(j) EUTMR, is different from the prohibition of deceptive trade marks under Article 7(1)(g) EUTMR, which, for example, requires the existence of actual deceit or a sufficiently serious risk of deceit.

Examples where misleading indication was found

4.4 Additional considerations

When applying Article 7(1)(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

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 Article 7(1) (j) EUTMR. Additionally, the argument that a GI is not known to the relevant public cannot succeed against an objection under Article 7(1)(j) EUTMR.

4.4.1 Translations

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, C–132/05, Commission v Germany, EU:C:2008:117, § 47).

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 Article 7(1)(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’.

4.4.2 Use of delocalisers

According to Article 26(1)(b) of Regulation (EU) 2024/1143 and Article 40(1)(b) of Regulation (EU) 2023/2411, geographical indications (GIs) are protected even if the true origin of the products or services is indicated or if the protected name or GI

is accompanied by an expression such as ‘style’, ‘type’, ‘method’, ‘as produced in’, ‘imitation’, ‘flavour’, ‘fragrance’, ‘like’ or similar.

Therefore, the fact that the GI reproduced or evoked in the EUTM is accompanied by these expressions does not rule out the application of Article 7(1)(j) EUTMR.

In other words, even if the public is informed about the actual origin of the product, an objection will still be raised under Article 7(1)(j) EUTMR. Notwithstanding this, the trade mark will be misleading under Article 7(1)(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.

4.4.3 Identity of the applicant

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 Article 7(1)(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).

4.4.4 GIs not known to the public

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

is in particular because the reputation of a GI is not a condition for its protection (02/02/2017, T-510/15, 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 Article 7(1)(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, C-96/09 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 (Article 8(6) 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, C-75/15, Verlados, EU:C:2016:35, § 24-25).

4.5 Limits to the scope of protection

4.5.1 Elements of compound GIs that will not be afforded protection

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 Article 7(1)(j) EUTMR on the sole grounds that it contains a generic or a common term that forms part of a registered compound GI (Article 26(7) of Regulation (EU) 2024/1143 or Article 40(7) of Regulation (EU) 2023/2411; see judgments 09/06/1998, C‑129/97 & C‑130/97, Époisses, EU:C:1998:274, § 37-38; 12/09/2007, T-291/03, GRANA BIRAGHI, EU:T:2007:255, § 58, 60; 04/12/2019, C-432/18, Aceto balsamico di Modena, EU:C:2019:1045, § 26, 28) . Both Article 2(h) of Regulation (EU) 2024/1143 and Article 4(6)(a) of Regulation (EU) 2023/2411 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. Article 4(6)(b) and (c) of Regulation (EU) 2023/2411 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

product attributes ;

a term that does not refer to a specific product .

As pointed out in the Opinion of Advocate General Hogan of 29/07/2019, C-432/18, 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).

4.5.1.1 Generic terms

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, C‑132/05, Parmigiano Reggiano, EU:C:2008:117,§ 36). A term like this can be declared ‘generic’ by the legislator or the EU judicature. Commission Regulation (EC) No 1107/96 of 12 June 1996 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,

Camembert, Cheddar, Edam, Emmentaler and Gouda.

The generic nature of these terms has also been confirmed in: Regulation (EC) No 1107/96, footnotes to the PDOs ‘West Country farmhouse

Cheddar cheese’ and ‘Noord-Hollandse Gouda’ Commission Implementing Decision (EU) 2025/107 of 23 January 2025 refusing

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, C‑132/05, Parmigiano Reggiano,

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 Article 7(1)(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

4.5.1.2 Common terms

‘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, C-432/18, Aceto Balsamico di Modena, EU:C:2019:650, § 32-33). A trade mark will not be refused under Article 7(1)(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.

Examples of ‘common terms’ within compound GIs

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, C-132/05, Parmigiano Reggiano, EU:C:2008:117; 12/09/2007, T-291/03, GRANA BIRAGHI, EU:T:2007:255).

4.5.2 Logical and conceptual unit

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, C‑75/15, 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

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, T‑659/14, PORT CHARLOTTE, EU:T:2015:863, § 71; 14/09/2017, C‑56/16 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.

4.6 Trade marks in conflict with two or more GIs

In some cases an EUTM application may constitute use or evocation of more than one GI at the same time.

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.

Examples of clearly distinct geographical areas

Examples of overlapping geographical areas

Examples of same geographical area

Examples of the same geographical area – names refer to different areas within a

greater region

5 Relevant Goods and Services under EU Regulations

The ex officio examination covers all of the situations within the GI scope of protection (Article 26(1) of Regulation (EU) 2024/1143 and Article 40(1) of Regulation (EU) 2023/2411). 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;

services for which the product covered by the GI is the specific object of that

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;

processed goods in which the product covered by the GI is an ingredient, in the

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.

5.1 Identical goods to those covered by the GI and related services

5.1.1 Goods identical to the GI product

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.

Wine, spirit drinks and agricultural products

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 Regulation (EU) No 1308/2013 (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 Regulation (EU) 2019/787 (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 Regulation (EU) 2024/1143 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’).

Craft and industrial products

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).

5.1.2 Services where the GI product is the object

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.

5.2 Comparable goods

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, T-40/24, 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 Article 8 EUTMR. Accordingly, the criteria set out in the judgment of 29/09/1998, C‑39/97, 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, C‑4/10 & C‑27/10, 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.

Later jurisprudence has further developed on the criteria to be taken into account in a global assessment, including, among others:

method of production;

ingredients;

alcohol content;

taste;

physical appearance;

protection under different GI regulations.

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

consumer is well aware .

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

she is familiar with Mediterranean cuisine .

The following are some examples of comparable products.

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

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.

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.

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.

The following are some examples of processed goods in which the GI product is an ingredient:

5.4 Restriction of the list of goods and related services

5.4.1 Presumption arising from the restriction of the goods and services

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 Article 26(1)(a), 2nd part, of Regulation (EU) 2024/1143 or Article 40(1)(a), 2nd part, of Regulation (EU) 2023/2411, 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 Regulation (EU) 2024/1143 or Regulation (EU) 2023/2411 is presumed to be fulfilled in that situation (see 25/06/2025, T-239/23, NERO CHAMPAGNE / Champagne (GI), EU:T:2025:638, § 57-58). Therefore, objections raised by the Office under Article 7(1)(j) EUTMR and Article 26(1) (a) of Regulation (EU) 2024/1143 or Article 40 (1) (a) of Regulation (EU) 2023/2411 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).

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, T-239/23, NERO CHAMPAGNE / Champagne (GI), EU:T:2025:638, § 59).

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 Article 26(1)(a), 2nd part, and (b) to (d) of Regulation (EU) 2024/1143 or Article 40(1) (a), 2nd part, and (b) to (d) of Regulation (EU) 2023/241 (see, 25/06/2025, T-239/23, 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 (Article 8(6) EUTMR).

5.4.2 Restriction of the list of goods and services

The waiver of objections raised by the Office under Article 7(1)(j) EUTMR and Article 26(1)(a) of Regulation (EU) 2024/1143 or Article 40(1)(a) of Regulation (EU) 2023/2411

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.

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.

Examples:

6 GIs not Protected under EU Regulations

6.1 GIs protected at national level in an EU Member State

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 Article 7(1)(j) EUTMR. Accordingly, they do not constitute, as such, and for that reason alone, a ground for refusal under Article 7(1)(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 Article 7(1)(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 (Article 70(1) of Regulation (EU) 2023/2411). Those GIs are protected by the national law of Member States and are therefore considered for the application of Article 7(1)(j) EUTMR, as explained in these Guidelines, only before that date.

6.2 GIs from non-EU countries

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').

6.2.1 GI is protected only in the non-EU country of origin under its national legislation

Article 7(1)(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, C-300/98 & C-392/98, 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 Article 7(1)(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, Article 7(1)(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.

6.2.2 GI is protected under an agreement to which the EU is a contracting party

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

not subject, in its implementation or effects, to the adoption of any subsequent

measure (14/12/2000, C‑300/98 & C‑392/98, 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 Article 26 and Article 31(1), (2) and (3) of Regulation (EU) No 2024/1143 (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).

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 Article 7(1)(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 Article 7(1)(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, T‑237/08, Cuvée Palomar, EU:T:2010:185, § 104-108; 19/06/2013, R 1546/2011‑4, FONT DE LA FIGUERA). Examples:

6.2.3 GI is protected under the Lisbon System (Geneva Act)

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 Council Decision (EU) 2019/1754( ). 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 Article 7(1)(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 Regulation (EU) 2019/1753 on the EUʼs action following its accession to the Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications (Regulation (EU) 2019/1753)( ). Certain provisions of that Regulation have been amended by Regulation (EU) 2023/2411 to ensure consistency in relation to the establishment of a Union system for the protection of GIs for craft and industrial products.

Relevant GIs under the Lisbon System

that refer to products protected at European Union level (i.e. wine, spirit drinks,

agricultural products and craft and industrial products); that have been registered in the International Register; and

that have been granted protection in the European Union through Regulation

(EU) 2019/1753.

Relevant point in time

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 (Article 4(1) and (2) of Regulation (EU) 2019/1753) and assesses it (Article 5 of Regulation (EU) 2019/1753). 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 (Article 6 of Regulation (EU) 2019/1753). The procedure ends with a decision of the Commission or the Office on the protection in the EU of the third-country GI (Article 7 of Regulation (EU) 2019/1753).

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, Article 10(3) of Regulation (EU) 2019/1753 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.

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

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

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) Regulation (EU) 2019/1753).

Scope of protection of GIs under the Geneva Act

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

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 Article 11(1) and (3) of the Geneva Act in conjunction with Regulation (EU) 2019/1753. 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, Article 11(1)(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; Article 11(1)(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, Article 11(1)(a)(ii) of the Geneva Act, which refers to the use of GIs in respect of goods or services that are not

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. Article 11(1)(a)(ii) of the Geneva Act can, however, be relied on in third-party observations and in oppositions pursuant to Article 8(6) EUTMR (see the Guidelines, Part C, Opposition, Section 6, Geographical indications (Article 8(6) EUTMR).

6.2.4 GI is protected under an international agreement signed only by Member States (i.e. the EU is not a party)

Article 7(1)(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 Article 7(1)(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 Article 7(1)(j) EUTMR if it encroaches upon the exhaustive nature of EU law. Until recently, this only affected agricultural products, wines and spirit drinks. However, Regulation (EU) 2023/2411 provides for a new uniform and exclusive EU system for GIs for craft and industrial products and, pursuant to Article 70(1), 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, C‑478/07, 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

to the Lisbon Agreement for products falling within the scope of Regulation (EU) 2023/2411, that Member State shall, no later than 2 December 2026, choose to request either (i) the registration of that appellation of origin under Regulation (EU) 2023/2411 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

(EU) 2023/2411). 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) Regulation (EU) 2023/2411 applies mutatis mutandis. Appellations of origin originating in a non-EU Member State and protected under the

Lisbon Agreement in one of the EU Member States for products falling within the scope of Regulation (EU) 2023/2411, but not yet protected under that Regulation, continue to exist and can be used as the basis for an objection under Article 7(1)(j) EUTMR. The only situations where GIs protected under an international agreement concluded by Member States can still be basis for the application of Article 7(1)(j) EUTMR are the following. International agreements concluded with non-EU countries by a Member State

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 Article 307, Treaty Establishing the European Community, now Article 351 TFEU, as interpreted by the Court in its judgment of 18/11/2003, C‑216/01, Budějovický Budvar, EU:C:2003:618, § 168-172). International agreements concluded with a non-EU country by a Member State after

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.

7 Relationship with other EUTMR provisions

When the mark can be objected to under Article 7(1)(j) EUTMR, further examination may still be necessary under the remaining possible grounds for refusal, such as Article 7(1)(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.

Example

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 Article 58(1)(c) EUTMR. For further information, see the Guidelines, Part B, Examination, Section 4, Absolute Grounds for Refusal, Chapter 8, Deceptive Trade Marks (Article 7(1)(g) EUTMR), paragraph 4, and Part D, Cancellation, Section 2, Substantive provisions, paragraph 2.4.

Part B Examination Section 4 Absolute grounds for refusal

1 Article 7()(k) EUTMR

Article 7(1)(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.

2 General Remarks on EU Regulations

Protection of TTWs is provided for in Council Regulation (EU) No 1308/2013, in Chapter III of Commission Implementing Regulation (EU) 2019/34 and in Chapter III of Commission Delegated Regulation (EU) 2019/33 ( ), which lay down certain detailed rules for the implementation of the Council Regulation (implementing and delegated acts).

2.1 Definition of TTWs under EU Regulations

As regards the definition of TTWs, recital 104 of Council Regulation (EU) No 1308/2013indicates 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 Regulation (EU) 2019/33 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 112 and 113 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.

According to Article 112 of Council Regulation (EU) No 1308/2013, 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

indication under EU or national law; or the production or ageing method or the quality, colour, type of place, or a particular

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 Regulation (EU) 2019/34, 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 Article 112 of Regulation (EU) No 1308/2013; 3. the language referred to in Article 24 of Delegated Regulation (EU) 2019/33; 4. the grapevine product category or categories concerned by the protection;

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;

6. a summary of the definition or conditions of use;

7. the name of the country or countries of origin;

8. the date of inclusion in the register. The eAmbrosia search tool provides information about TTWs protected in the EU.

3 Relevant TTWs under EU Regulations

Article 7(1)(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

Regulation (EU) No 1308/2013, in Chapter III of Commission Implementing Regulation (EU) 2019/34 and in Chapter III of Commission Delegated Regulation (EU) 2019/33. Relevant information about TTWs can be found in the eAmbrosia database maintained by the Commission.

3.1 Relevant point in time

Article 7(1)(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.

4 Relevant provisions governing conflicts with trade marks

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/

ageing method, quality, colour or type of place or a particular event linked to

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, T-341/09, 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 Article 113(2) of Council Regulation (EU) No 1308/2013 , TTWs are protected, only

in the language and for the categories of grapevine products claimed in the

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 Regulation (EU) 2019/33 . 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 Article 112 of Regulation (EU) No 1308/2013 , 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 2008/95/EC of the European Parliament and of the Council ( ), Directive (EU) 2015/2436 of the European Parliament and of the Council ( ) or under Regulation (EU) 2017/1001 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.

No objection was raised in the following examples.

5 Relevant Goods

Article 113(2) of Council Regulation (EU) No 1308/2013 refers to ‘ categories of grapevine products claimed in the [TTW] application ’. Similarly, Article 32 of Commission Delegated Regulation (EU) 2019/33 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 Article 92(1) of Council Regulation (EU) No 1308/2013 for the following reasons.

According to Article 92(1) of Council Regulation (EU) No 1308/2013 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 .

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 Article 92(1) of Council Regulation (EU) No 1308/2013 . For instance, in the event of an EUTM application containing the TTW ‘Fondillón’, for wine in Class 33, the objection should be raised not

against wine of overripe grapes that is protected by the TTW, but against wine as such (e.g. 'Fondillón' (TTW) wine ).

5.1 Restrictions of the list of goods

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.

6 International Agreements

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.

7 Relationship with other EUTMR Provisions

When the mark can be objected to under Article 7(1)(k) EUTMR , further examination may still be necessary under the remaining possible grounds for refusal, such as Article 7(1)(j) EUTMR . In other words, an EUTM application may be in conflict with both a GI in the wine sector and a TTW. Examples

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 Article 58(1)(c) EUTMR. For further information, see the Guidelines, Part B, Examination, Section 4, Absolute Grounds for Refusal, Chapter 8, Deceptive Trade Marks (Article 7(1)(g) EUTMR), paragraph 4, and Part D, Cancellation, Section 2, Substantive provisions, paragraph 2.4.

Part B Examination Section 4 Absolute grounds for refusal

1 Article 7()(l) EUTMR

Article 7(1)(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.

2 General Remarks on EU Regulations

2.1 Definition of traditional specialities guaranteed under EU Regulations

Protection of TSGs is provided for in Title III, Chapter 2 of Regulation (EU) 2024/1143. As regards the definition of TSGs, Article 52 of Regulation (EU) 2024/1143 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 Regulation (EU) 2024/1143, 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

least 30 years and such usage may embrace modifications necessitated by changing hygiene, safety and other relevant practices.’ According to Article 71(1) of Regulation (EU) 2024/1143,‘[a] name registered as a traditional speciality guaranteed may be used by any operator marketing a product that complies with the corresponding specification’. Article 68 of Regulation (EU) 2024/1143 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’.

2.2 Relationship with trade marks

In contrast with GIs, there is no specific provision in Regulation (EU) 2024/1143 for the relationship of TSGs with trade marks (i.e. a provision analogous to Article 31). Article 68(1) prohibits the use of the TSG in a number of situations but not the registration of a trade mark. Article 7(1)(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 Article 7(1)(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.

3 Relevant TSGs Under EU Regulations

Article 7(1)(l) EUTMR applies where a TSG has been registered under the procedure laid down by Regulation (EU) 2024/1143. Relevant information about traditional specialities guaranteed can be found in the eAmbrosia register maintained by the Commission.

3.1 Relevant point in time

Article 7(1)(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.

4 Situations covered by Article 68 of Regulation (EU) 202/113

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.

The scope of protection of protected TSGs is narrower than that of GIs. Pursuant to Article 68 of Regulation (EU) 2024/1143, 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.

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 Article 26 of Regulation (EU) 2024/1143 in connection with GIs (see the Guidelines, Part B, Examination, Section 4, Absolute Grounds for Refusal, Chapter 10, Geographical Indications (Article 7(1)(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.

5 Relevant goods

Article 54 of Regulation (EU) 2024/1143 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.

5.1 Restrictions of the list of goods

TSG applications, in accordance with Article 57 of Regulation (EU) 2024/1143, 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.

6 International Agreements

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.

7 Relationship with other EUTMR provisions

When the mark can be objected to under Article 7(1)(l) EUTMR, further examination may still be necessary under the remaining possible grounds for refusal, such as Article 7(1)(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 Article 58(1)(c) EUTMR. For further information, see the Guidelines, Part B, Examination, Section 4, Absolute grounds for refusal, Chapter 8, Deceptive trade marks (Article 7(1)(g)

EUTMR), paragraph 4.2.1, and Part D, Cancellation, Section 2, Substantive provisions, paragraph 2.4.

Part B Examination Section 4 Absolute grounds for refusal

1 Article 7()(m) EUTMR

Regulation (EU) 2015/2424 amending Council Regulation (EC) No 207/2009 on the Community trade mark introduced Article 7(1)(m) as a specific ground for objecting to trade marks in conflict with earlier plant variety denominations. In particular, Article 7(1)(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.

2 Legislative Framework

As regards EU legislation protecting plant variety rights, Council Regulation (EC) No 2100/94 of 27 July 1994 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 Article 20(1) 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 Article 7(1)(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.

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 Article 7(1)(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.

3 Definition of Plant Variety Denomination

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 (Article 63 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 (Article 17 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.

Article 7(1)(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.

4.1 Registered plant variety denominations

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.

Plant variety rights Pursuant to Article 19(1) 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 Article 19(3) 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 Article 21 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 Article 7(1)(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, Article 7(1)(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.

4.2 Relevant point in time

Article 7(1)(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.

4.3 The EUTM application consists of, or reproduces in its essential elements, the plant variety denomination

Pursuant to Article 7(1)(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, T-569/18, 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

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

denomination is just one of numerous elements of the sign; or the sign contains a conceptual meaning/message that precludes the term that is

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

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

the conceptual meaning/message of the sign reinforces the perception of the term

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).

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.

4.4 Plant varieties of the same or closely related species

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.

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 Article 7(1)(m) EUTMR in respect of the relevant product.

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.

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 Article 63 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 Article 7(1)(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.

4.5 Relationship with other EUTMR provisions

Where a plant variety denomination is used in the market but has not been registered or published in the CPVO or at national level, Article 7(1)(c) and (d) EUTMR might be applicable.

Part B Examination Section 4 Absolute grounds for refusal

1 Introduction

According to Article 7(3) EUTMR, a trade mark may still be registered despite the fact that it does not comply with Article 7(1)(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’. Article 7(3) EUTMR constitutes an exception to the rule laid down in Article 7(1)(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 Article 7(1)(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 Article 7(3) 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 Article 7(3) EUTMR, this information is published in the EUTM Bulletin (INID code 521).

2 Requests

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 Article 7(3) EUTMR unless the applicant has pleaded them (12/12/2002, T-247/01, Ecopy, EU:T:2002:319, § 47). According to Article 2(2) EUTMIR, the application may include a claim that the sign has acquired distinctive character through use within the meaning of Article 7(3) EUTMR, as well as an indication of whether this claim is meant as a principal or subsidiary one.

Such claim may also be made within the period referred to in Article 42(2), second sentence, EUTMR. Therefore, as from 01/10/2017 and in accordance with Article 2(2) 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

at the latest, in reply to the examiner’s first objection.

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 Article 66(2) 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.

3 The Point in Time for which Acquired Distinctiveness has to be Established

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’.

3.1 Examination proceedings

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

distinctive character was acquired through use of the trade mark prior to the date of application for registration (11/06/2009, C-542/07 P, Pure Digital, EU:C:2009:362, § 49, 51; 07/09/2006, C-108/05, 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, T-137/08, Green/Yellow, EU:T:2009:417, § 49).

3.2 Cancellation proceedings

In cancellation proceedings, a trade mark that was registered in breach of the provisions of Article 7(1)(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 (Article 59(2) 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 Article 7 EUTMR (14/12/2011, T-237/10, Clasp lock, EU:T:2011:741, § 52-53, 86; 15/10/2008, T-405/05, Manpower, EU:T:2008:442, § 127, 146; 10/12/2008 T-365/06, BATEAUX MOUCHES, EU:T:2008:559, § 37-38).

4 Consumers

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, T‑13/18, Crédit Mutuel, EU:T:2019:673, § 142): for individual marks, this is to guarantee the identity of the origin of the goods or

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, T‑378/07, 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

the members of the association that is the proprietor of the mark from those of other undertakings (20/09/2017, C‑673/15 P & C‑674/15 P & C‑675/15 P & C‑676/15 P, DARJEELING (fig.) / DARJEELING et al., EU:C:2017:702, § 63);

for certification marks, the essential function is to distinguish goods or services

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, T-378/07, 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.

5 Goods and services

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, C‑108/97 & C‑109/97, Chiemsee, EU:C:1999:230, § 52; 19/05/2009, T‑211/06, T‑213/06, T‑245/06, T‑155/07 & T‑178/07, 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.

6 Territorial aspects

Pursuant to Article 1 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, C‑25/05 P, Bonbonverpackung, EU:C:2006:422, § 81-83; 29/09/2010, T‑378/07, 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, C‑25/05 P, Bonbonverpackung, EU:C:2006:422, § 83, 86; 29/09/2010, T‑378/07, Représentation d’un tracteur en rouge, noir et gris, EU:T:2010:413, § 30).

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, T‑359/12, 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, C‑98/11 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, T‑275/21, 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, T‑273/12, Ab in den Urlaub, EU:T:2014:568, § 45).

6.1 Special provisions with respect to the accession of new Member States

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.

6.2 Language area

Acquired distinctiveness through use must be shown with respect to all Member States/territories where the objection applies (see the Guidelines, Part B, Examination,

Situation c) above would normally happen where: the verbal element of the mark is a basic English term, and the mark is objected to

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

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.

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.

6.3 Acquired distinctiveness throughout the EU

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,T-411/14, 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,C-84/17 P, C-85/17 P & C-95/17 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, C-98/11 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, C-84/17 P, C-85/17 P & C-95/17 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.

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, C-84/17 P, C-85/17 P & C-95/17 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, T-137/08, 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, T-411/14, 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, T-307/17, 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, T-340/18, SHAPE OF A FLYING V GUITAR (3D), EU:T:2019:455, § 67-68).

7 Standard of proof

Under Article 7(3) 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 Article 7(3) EUTMR are not the same as those to prove genuine use pursuant to Article 47(2) EUTMR and must not be confused with the test on acquisition of reputation (21/04/2015, T‑359/12, 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, T‑262/04, 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, C‑108/97 & C‑109/97, Chiemsee, EU:C:1999:230, § 49).

8 Assessment of the evidence

For the general guidance on evidence filed during the proceedings, please see the Guidelines, Part A, General rules, Section 10, Evidence. Article 97 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.

catalogues;

price lists;

invoices;

annual reports;

turnover figures;

advertising investment figures and reports;

advertisements (press cuttings, billboard posters, television adverts), together with

evidence of their intensity and reach; customer or market surveys;

affidavits.

In establishing acquired distinctiveness, the following factors, among other elements, can be considered (29/09/2010, T‑378/07, Représentation d’un tracteur en rouge, noir et gris, EU:T:2010:413, § 32 and 22/03/2023, T‑750/21, BIO-BEAUTÉ, EU:T:2023:147 § 40): the market share held by the mark for the relevant goods or services;

how intensive, geographically widespread and long-standing use of the mark has

been; the amount invested by the undertaking in promoting the mark for the relevant

goods or services; the proportion of the relevant public who, because of the mark, identifies the goods

or services as originating from a particular undertaking; statements from chambers of commerce and industry or other trade and

professional associations. Certain evidence has usually greater evidential value than others (see 29/01/2013, T‑25/11, Cortadora de cerámica, EU:T:2013:40, § 74, 19/10/2022, T‑275/21, DEVICE OF A CHEQUERBOARD PATTERN (fig.), EU:T:2022:654, § 99 and 22/03/2023, T‑750/21, 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;

market research;

statements from independent trade and professional associations or public

authorities. On the other hand, secondary evidence can support direct evidence and can consist of: sales figures;

invoices;

magazines;

catalogues;

advertising material.

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;

shows use of the mark in relation to the goods and services applied for;

identifies the dates of use;

identifies the specific and relevant geographical territory of use within the EU;

shows the relevant public’s perception of the mark.

If the evidence does not meet the requirements set out above, it may not be sufficient to support the applicant’s claims.

8.1 Types of evidence particularly relevant to prove acquired distinctiveness by use

8.1.1 Opinion polls and market surveys

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, T‑275/21, 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, C‑217/13 & C‑218/13, 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, C‑217/13 & C‑218/13, Oberbank e.a., EU:C:2014:2012, § 48). They must be complemented by other means of evidence.

8.1.2 Market share

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, C‑25/05 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.

8.1.3 Advertising and turnover expenses

Figures concerning turnover and advertising expenses can have a significant impact on the assessment of the evidence (for advertising expenses, see 22/06/2006, C‑25/05 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, T-404/18, 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,

on the one hand, and consumer perception on the other hand; precisely identifies the turnover/advertising figures and evidence relating to the

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

shows the specific period(s) of use (including details of when use commenced) for

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.

8.1.4 Affidavits (sworn or affirmed written statements)

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, T‑275/21, 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, T‑338/11, PHOTOS.COM, EU:T:2012:614, § 51). Affidavits must identify precisely the trade mark applied for (13/09/2012, T‑72/11, ESPETEC, EU:T:2012:424, § 82 et seq.).

8.1.5 Prior registrations and acquired distinctiveness

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, T‑553/12, BATEAUX MOUCHES, EU:T:2014:264, § 72-73).

8.2 Use of the sign

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.).

8.2.1 Use of the sign with insignificant variations

The concept of use of a trademark within the meaning of Article 7(3) 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, T‑307/17, 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, T‑307/17, DEVICE OF THREE PARALLEL STRIPES (fig.), EU:T:2019:427, § 72).

8.2.2 Use of the sign in combination with another trade mark

It is possible to prove acquired distinctiveness of a sign that has been used together with other trade marks (28/10/2009, T-137/08, Green/Yellow, EU:T:2009:417, § 27),

provided that the relevant consumer attributes to the sign in question the function of identification (07/07/2005, C-353/03, Have a break, EU:C:2005:432; 30/09/2009, T-75/08, !, EU:T:2009:374, § 43; 28/10/2009, T-137/08, 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, C‑215/14, Nestlé KIT KAT, EU:C:2015:604, § 66; 24/02/2016, T‑411/14, Shape of a bottle (3D), EU:T:2016:94, § 76; 16/03/2016, T‑363/15, LAATIKON MUOTO (3D), EU:T:2016:149, § 51).

8.2.3 Use as a trade mark

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, T‑474/12, 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, T‑520/12, Gifflar, EU:T:2014:620, § 44-45).

8.3 Length of use

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

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.

8.4 Post-filing-date evidence

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, C-217/13, 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.

Part B Examination Section 4 Absolute grounds for refusal Chapter 15 European Union collective marks

1 Character of Collective Marks

1.1 Definition

A European Union collective mark (EU collective mark) is a specific kind of EUTM that, pursuant to Article 74(1) 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.

1.2 Specific function

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, C‑673/15 P & C‑674/15 P & C‑675/15 P & C‑676/15 P, DARJEELING (fig.) / DARJEELING et al., EU:C:2017:702, § 63; 12/12/2019, C‑143/19 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 (Article 74(2) 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, C‑673/15 P & C‑674/15 P & C‑675/15 P & C‑676/15 P, DARJEELING collection de lingerie (fig.) / DARJEELING et al., EU:C:2017:702, § 54 et seq; 05/03/2020, C‑766/18 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, C‑143/19 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’.

1.3 Relationship with individual and certification marks

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 Article 83 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).

1.4 Applicable provisions and examination

The EUTMR provisions apply to EU collective marks, unless Articles 75 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 Article 7 EUTMR , this will also be examined.

Pursuant to the new provision of Article 16 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 (Article 7(1)(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 (Article 7(1)(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 (Article 7(1)(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.

2 Ownership

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 (Article 74 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).

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 Article 74 EUTMR.

3 Specific Absolute Grounds of Refusal

3.1 Misleading as to the character or meaning of the mark

Under Article 76(2) 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

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.

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 (Article 7(1)(j) EUTMR).

3.2 Regulations governing use

The regulations governing use must be filed within 2 months of the filing date of the application of the collective mark (Article 75(1) EUTMR) and their content must comply with the requirements of Article 16 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.

3.2.1 Compliance with public policy and morality

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 Article 76(1) EUTMR. This ground for refusal applies in addition to Article 7(1)(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

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.

3.2.2 Remedies

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 (Article 76(3) EUTMR) raised by the Office under Articles 76(1) 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.

4 Specificities as Regards Examination of the General Absolute Grounds for Refusal

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 Article 7(1) EUTMR (Article 74(3) 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 Article 7(1) EUTMR, without prejudice to the application of Article 7(3) EUTMR. If, for example, a collective mark is not inherently distinctive under Article 7(1)(b) EUTMR, it will be refused (18/07/2008,R 229/2006-4, CHARTERED MANAGEMENT ACCOUNTANT, § 7). To the extent that Article 7(1)(b), (c) or (d) EUTMR and the corresponding exception for acquired distinctiveness (Article 7(3) 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.

Pursuant to Article 74(2) EUTMR, by way of derogation from Article 7(1)(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, Article 74(2) EUTMR is not an exception to the requirement of distinctiveness. Article 7(1)(b) and Article 7(3) 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 C‑766/18 P, BBQLOUMI (fig.) / HALLOUMI, EU:C:2020:170, § 72 and 73).

The following examples illustrate applications for EU collective trade marks that, although falling within the geographical derogation under Article 74(2) EUTMR, were refused under Article 76(1) EUTMR due to their lack of distinctiveness under Article 7(1)(b) EUTMR.

In other words, a sign applied for as an EU collective mark must have elements

capable of distinguishing the goods or services of the members of the

association from those of other undertakings to be considered distinctive within the meaning of Article 7(1)(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.

Consequently, the exception provided for in Article 74(2) 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.

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 Article 7(1)(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.

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

of the Valencian Community) identify a specific association and might be accepted as collective marks for tourist services or edible oils respectively pursuant to Article 74(2) 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 Article 75(2) EUTMR. According to this provision, the regulations governing use of an EU collective mark availing of the derogation provided by Article 74(2) 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.

In the event that the goods and services have to be limited as a consequence of an objection raised under Article 7(1)(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 (Article 16(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 (Article 7(1)(j) EUTMR), Chapter 11, Trade Marks in Conflict with Traditional Terms for Wines (Article 7(1)(k) EUTMR) and Chapter 12, Trade Marks in Conflict with Traditional Specialities Guaranteed (Article 7(1)(l) EUTMR).

Part B Examination Section 4 Absolute grounds for refusal Chapter 16 European Union certification marks

1 Relevant Provisions

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 recital 27 of Regulation (EU) 2015/2424 amending Council Regulation (EC) No 207/2009). Until the latest amendment of the EUTMR by Amending Regulation (EU) 2015/2424, 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 Article 17 EUTMIR. EU designations in international registrations (IRs) are addressed in Article 194 EUTMR. The general provisions of the EUTMR apply to EU certification marks as well, unless the specific provisions of Articles 83 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.

2 Definition and Specific Function

2.1 Definition

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. Article 83(1) 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.

2.2 Specific function

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.

3 Main Elements

3.1 Sign and distinguishing capacity

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 (Article 83(3) and Article 4 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 (Article 83(1) and (3), Article 4(a) and Article 7(1)(a) EUTMR).

3.2 Description as certification mark

The applicant for a certification mark has to describe it as such in its application (Article 83 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 (Article 2(1)(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).

3.3 List of goods and services

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 (Article 33 EUTMR).

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.

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 (Article 17(d) EUTMIR). The two lists (goods and services filed in the application and those listed in the regulations of use) must be identical.

3.4 Regulations governing use

The regulations governing use must be filed within 2 months of the application for the certification mark (Article 84(1) EUTMR) and their content must comply with Article 17 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 (Article 88(1) EUTMR), which will verify that the modifications satisfy the requirements of Article 84(2) EUTMR and Article 17 EUTMIR and do not raise any grounds for refusal applicable to EU certification marks referred to in Article 85 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.

4 Specific Requirement as Regards Ownership

Any natural or legal person can apply for and be an owner of an EU certification mark. Article 83(2) 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 (Article 83(2) 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

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

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 (Article 91 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 Article 17(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.

5 Examination of the Specific Grounds of Refusal

5.1 Misleading as to the character or the meaning of the mark

Under Article 85(2) 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.

5.2 Certification of geographical origin

Pursuant to Article 83 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

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

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

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 Article 83 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 (Article 7(1) (j) EUTMR).

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 Article 83 EUTMR.

Examples of applications refused under Article 83 EUTMR:

Example of an application containing a geographical term and registered:

5.3 Regulations governing use

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.

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.

5.3.1 Compliance with public order

The regulations governing use must comply with public policy and accepted principles of morality. This public order requirement under Article 85(1) EUTMR applies specifically to the regulations governing use. It applies in addition to Article 7(1)(f)

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 Article 85 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).

5.3.2 Remedies

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 (Article 85(3) EUTMR) raised by the Office under Articles 85(1) 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.

6 Specificities as regards examination of the general grounds for refusal

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 Article 7(1) EUTMR (Article 85(1) 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 Article 7(1) 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 Article 7(1)(b) and (c) EUTMR.

When assessing the general grounds of refusal of Article 7(1)(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 Article 7(1)(b), (c) or (d) EUTMR and the corresponding exception for acquired distinctiveness (Article 7(3) 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 Article 7(1)(g) EUTMR to the extent that it remains applicable in addition to the specific provision of Article 85(2) 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 Article 7(1)(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 Article 83(1) EUTMR only (and not under Article 7(1)(j) EUTMR) given that a limitation of the goods can never overcome the prohibition of certification of geographical origin laid down in Article 83(1) EUTMR.