EUTM System—Absolute Grounds for Refusal

Günther Marten,[Trademark]

 

This is part of a series of articles with the aim to give the practitioners in China a rough idea of the functioning of the European IPR system with a focus on trademarks and designs. The present article will look at the examination phase of an application for a trademark and a design, in particular at the possible objections for absolute grounds. From previous articles you are already informed about formalities of the application and the whole application process until the registration, its cost and duration.

The absolute ground check has the purpose of not registering trademarks and designs whose appearance would be against public interests. The most obvious example, though not the most employed ground, is the objection of trademarks and designs which infringe public policy or accepted principles of morality. But it seems clear and understandable that an offensive trademark or design to common moral standards should not have the right to be protected through registration. It is at the same time obvious that such marks should not be in the register, but it is less obvious what are the common standards of trademarks and designs to be considered offensive. As its practical importance is low, it will be treated only briefly a bit later on.

Having passed the formality check, the first thing the examiner will look at is the classification of the goods and services, as proposed by the applicant. In a previous article the advantage to use the Harmonized Database (HDB) has already been mentioned. Choosing some of its 70,000 pre-accepted terms of goods and services would remove the uncertainty of the practitioners whether the list of goods and services, as proposed, will be accepted. Thus, these terms will be accepted by definition and no objection has to be faced in this regard. More than 80% of the goods and services applied for were already taken from this vast database.

 

The examination requirement of absolute ground

Different absolute grounds of refusal exist. They are exhaustively enumerated in Article 7 of EUTM Regulation. The most important ones are "devoid of any distinctive character" or "descriptiveness" of the respective term to the extent that the consumer will most likely not perceive the trademark as an indication of origin but rather as a reference to the goods and services in question. Later on in this article, some other absolute grounds will be discussed.

Some general principles are common to the absolute grounds examination. It is a contradictory procedure meaning that the examiner cannot base its decision of refusing the application on absolute grounds to which the applicant had not the occasion to comment on. Chinese applicants, same as other non-EU applicants, generally will be granted 2 months to comment on objections raised.

The examiner shall raise all objections concerning absolute grounds in one go to ease proceedings, although exceptionally the examiner may raise the one or the other objection at a different stage of the proceedings. Each of the absolute grounds is independent and has to be addressed by the applicant separately, although according to the case law of the European courts, a word mark that is descriptive of characteristics of goods or services is, on that account, necessarily devoid of any distinctive character with regard to the same goods or services.

It cannot be sufficiently repeated that the EU consists of actually 28 Member States and 23 languages; thus, an absolute ground, for example descriptiveness of a term in one language/country would force the examiner to raise the corresponding objection with the consequence that in that case the application would be rejected for the whole EU. From the applicant's point of view, in such a case, it would need to demonstrate that in the specific region or country, as indicated by the examiner, descriptiveness does not exist.

All the absolute grounds can be assessed only by reference, first, to the goods or services in respect of which registration is sought, second, to the relevant public's perception of that sign. This is particularly important to have in mind. For example, the term "trousers" would be descriptive for clothing goods in Class 25, but not for telecommunication services in Class 38. As to the consumers, the goods or services may be addressed to general end consumers or to professionals. According to one or the other, the attention level of the consumers may vary, being professionals generally are more attentive at the moment of purchase.

Another consideration to have in mind by practitioners is the possibility that the applicant can at any time of the proceedings restrict the list of goods and services without losing the filing date. If, for example, the term of the objected trademark is descriptive only for one of various goods and services, the applicant has the possibility to delete the corresponding goods or services from its list and the objection of the examiner would lose its reason. A restriction means that the specification covers afterwards less goods or services; a restriction would not be acceptable if the new specification covers different goods or services. However, if the applicant does not restrict its list accordingly, the examiner would have to reject the application in its entirety and including for the terms for which no objection has been raised.

The disclaimer is not anymore possible after the trademark reform of 2016/2017 (see earlier article of the series). So, for example if the trademark is composed of two terms, one of which being descriptive, the applicant is not able to disclaim the descriptive term to overcome the objection. However, the existing disclaimers on the register continue to be valid.

 

The main absolute grounds for refusal

As already indicated, the most often used objections of absolute grounds are the ones referring to non-distinctiveness and to descriptiveness, which is not astonishing to the Chinese practitioners. Before filing, the practitioner should also have done a screening of the tool TMView to see what kind of trademarks have been rejected and what were allowed by EUIPO in order to get some "feeling" of how examiners approach the issue of absolute grounds and mitigate the risk of being rejected.

According to settled case-law, distinctiveness of a trademark within the meaning of Article 7(1)(b) EUTM Regulation means that the sign serves to identify the product and/or services in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish that product from those of other undertakings.

Some examples of the practice of EUIPO may illustrate non-distinctive signs:

·         FLEX and FLEXI as referring to 'flexible'

·         MULTI as referring to 'much, many, more than one'

·         Abbreviations of the legal form of a company such as Ltd., GmbH, etc.

·         Famous story or book titles with regard to books or movies, like 'Cinderella'

·         Value statements such as SO WHAT DO I DO WITH MY MONEY for services in Class 35 and 36

·         Simple figurative elements, such as  

 

·         Simple typographical signs and pictograms, such as and , common non-distinctive labels as, for example,

·         Common shapes, as  or

All these examples have in common that the consumers will most likely not see in them an indication of origin of the goods or services. More examples including accepted ones can be found in the corresponding practice guidelines on the website of EUIPO.

The second most common ground of rejection is the descriptiveness of the sign. It must be refused as descriptive if it has a meaning which 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, among other things, 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. If the term is only allusive or suggestive it may proceed to registration.

The sign must be refused if it is descriptive in any of the official languages of the European Union, regardless of the size or population of the respective country. Systematic language checks are only performed in the official languages of the European Union. Chinese characters, even if the Chinese word forming it having a descriptive meaning in relation to the goods and services, are treated generally as having merely ornamental character. More on that in a separate article of the series.

As a general rule, a mere combination of words, 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.

Now once the objections have been raised, the examiners often are confronted with arguments by applicants which turn out in the light of the relevant case law to be irrelevant. It is referred to arguments such as "the descriptive use of a term cannot be ascertained by the examiner", "there is no need to keep the term free for other users", "the term has more than one meaning and other meanings are not descriptive" or the like. These arguments have no substantial relevance for the examination which has been confirmed by relevant case law of the European Court of Justice.

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. For instance, it may influence through associating the goods or services with a place that may elicit a favourable response (example MONACO). Chinese geographical places are generally, beside some examples, not famous to the European consumers.

Some other examples of word marks objected as descriptive:

·         STATISTICAL ANALYSIS for software

·         ROCK MUSIC for pre-recorded CDs

·         ELECTRONICA for trade fairs related to electronic goods

Single letters, numerals and names of colours are eligible or not on the basis of factual assessment by the examiner.

Purely figurative marks, as for example  for goods in Classes 18 and 31, may be objected as descriptive as they serve merely to indicate the type of animal for which the goods are intended.

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 a EUTM. Therefore, the question to be considered is whether the stylization and/or the graphical features of a sign are sufficiently distinctive and/or have a sufficient impact for the consumer to recognize in the sign a badge of origin. As to the typeface you find hereafter reproduced an objectionable and an eligible example, being the second example sufficiently fanciful and removed from its descriptive content:

Objectionable

Eligible

 

 

The assessment of the examiner on absolute grounds is generally not based on a survey; it may however indicate internet sites or book quotations where the corresponding term is indicated in a descriptive, so not in a trademark manner. The examiner is called to make an assessment how the potential consumer may perceive the trademark in question in the future on the marketplace. With regard to this perception assessment the reality may be different. Thus, for certain absolute grounds (the already indicated non-distinctiveness, descriptiveness and trademarks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade), the applicant has the possibility to overcome the ground(s) by claiming and evidencing that the trademark applied for has acquired distinctiveness, meaning that due to the intensive use on the market of this trademark, the consumers were used to recognize it as such. Again, such claim and evidence is only necessary for the country or region which it has been objected for by the examiner. The applicant explicitly has to make this claim and provide evidence accordingly. It constitutes an exception for the general rule to reject the trademark application.

 

The other absolute grounds for refusal

Finally, the EUTMR provide some other absolute grounds of refusal which however are of less practical importance. Just for the sake of being complete they are listed hereunder, each one with an objectionable example for illustration purposes:

Absolute ground

Objectionable Example

Customary sign or indication at the filing date

 

International Safety Symbol

Characteristics resulting from the nature of goods

 

for bananas

Contrary to public policy or to accepted principles of morality

SCREW YOU

Deceptive trademarks

 

   *for tea, cacao and artificial coffee, Cl. 30

Conflict with flags and symbols, as defined by the corresponding authority

Geographical Indications at EU level for comparable goods, for example WELSH LAMB

By the time of publication of this article, it may well be that the EU has recognised as a batch 100 Chinese Geographical Indications as being valid in the EU (by the same token China would have recognised another batch of 100 EU Geographical Indications as being valid in China). As any other foreign Geographical Indication recognised in the EU, these Chinese ones have the same level of protection against later trademark applications as any EU Geographical Indication. Thus, being a trademark application confusingly similar to an earlier Geographical Indication valid in the EU, the former has to be rejected by the examiner for that reason.

There are still other absolute grounds for refusal with marginal importance which will only be mentioned without citing examples. These are trademarks in conflict with traditional terms for wines, with traditional specialities guaranteed and with earlier plant variety denominations.

Lawyer fees, incurred by the applicant are not reimbursable. This also holds true for the case that an application has been rejected in the first place and accepted after the lawyer's intervention. In absolute ground examinations, reimbursement of fees is excluded.

With the present article read, the practitioner should be able to understand what to expect and how to understand examiner's reasoning when encountered an objection. He also will be able to strategically respond to them in a relevant way.

 

Disclaimer: The opinion expressed in this article is exclusively the personal view of the author and binds in no way the employer entities (EUIPO, EU Delegation to China).

 

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