眾律國際法律事務所

Article 7(1)(b) EUTMR: Distinctiveness as a requirement for trademark registration in the EU

According to article 4 European Union trademark regulation, to be capable of constituting a trademark, the subject matter of an application must satisfy three conditions: (I) it must be a sign; (II) it must be capable of being represented graphically, and (III) it must be capable of distinguishing the goods or services of one undertaking from those of others.

When it comes to the third condition, article 7(1)(b) states that trademarks which are devoid of any distinctive character shall not be registered. This article refers to the distinctive character of a trademark with regard to specific goods or services.

1. Word elements. Some words cannot convey distinctiveness to a sign if they are so frequently used that they have lost the capacity of distinguishing goods and services. For example, the word ECO (as denoting ecological) or Premium (as denoting best quality).
2. Title of books. Trademarks consisting solely of a famous story or book may be non-distinctive under this article. For example, “Cinderella” could be a distinctive trademark for clothing, but not in relation to books or films, since this story has become so long established and well known that, according to EU case-law, it has ‘entered into the language’ and is not capable of being ascribed any meaning other than the particular story of “Cinderella”.
3. Colours. When it comes to single colours per se, without any shape or contour, they are not normally inherently capable of distinguishing the goods of a particular undertaking. Furthermore, there is a limited number of colours, which actually means that a small number of trademark registrations could exhaust the entire range of colours available.
4. Single letters. Under normal circumstances, single letters are not registrable, specially in cases of single letters represented in standard characters with no graphic modifications. For example, this trademark will be accepted due to the fact that it provides sufficient distinctiveness:

             The same is valid for numbers.

5. Simple figurative elements. Such as circles, rectangles, lines or common pentagons are unable to convey any message that can be remembered by the consumers and will not be seen by them as a trademark. Example of refused trademarks:

6. Typographical symbols. Such as dot, comma, quotation or exclamation mark will be considered by the public as sign meant to catch the consumer’s attention, not as a sign that indicates commercial origin.
7. Commonplace figurative elements. Figurative representations that are commonly used in relation to the goods and services applies for will be refused. For example, the naturalistic representation of a wine leaf is not distinctive for wine, or the representation of a cow for milk is also considered not distinctive.
8. Pictograms. Basic signs and symbols that are interpreted as having only informational or instructional value in relation to the goods or services concerned are considered pictograms. Examples would be signs that indicate the mode of use, like for example a telephone in relation to pizza delivery services. Commonly used pictograms will not be distinctive.

For example, this sign was refused since it is the same as the core of international safety “high voltage symbol”:

References:

EUTMR http://eur-lex.europa.eu/legal-content/EN/TXT/?qid=1456313698327&uri=CELEX:02009R0207-20130701

https://euipo.europa.eu/tunnel-web/secure/webdav/guest/document_library/contentPdfs/law_and_practice/trade_marks_practice_manual/WP_LR_2016/Part-B/04-part_b_examination_section_4_absolute_grounds_for_refusal/TC/part_b_examination_section_4_absolute_grounds_for_refusal_tc_en.pdf