EU Trademark Examination and Absolute Grounds for Refusal

EU Trademark Examination and Absolute Grounds for Refusal

After you file a European Union Trade Mark (EUTM) application with EUIPO, it undergoes a formal examination process before publication. Unlike some national offices, EUIPO does not examine for relative grounds — it does not check whether your mark conflicts with existing trademarks. That task falls to third parties during the 3-month opposition period.

What EUIPO does examine are the absolute grounds for refusal under Article 7 of the EU Trade Mark Regulation (EU 2017/1001). Understanding these grounds is essential for filing a mark that will pass examination.

Pro tip: Before filing, run a free trademark check to assess whether your proposed mark may face examination issues based on descriptiveness or distinctiveness concerns.

The EUIPO Examination Process

EUIPO's examination has two phases:

Phase 1: Formalities Check

The examiner verifies:

• Completeness — all required fields (applicant details, mark representation, goods/services list) are present
• Fee payment — the applicable filing fees have been paid
• Classification accuracy — goods and services are correctly assigned to Nice classes using accepted TMclass terminology
• Representation clarity — the mark is represented clearly enough to determine the subject matter of protection
• Language compliance — a valid first and second language have been selected

If there are formalities issues, EUIPO issues a deficiency letter giving you typically 2 months to correct the problems.

Phase 2: Absolute Grounds Examination

This is the substantive examination. The examiner assesses whether the mark falls foul of any prohibition under Article 7 EUTMR.

Article 7: Absolute Grounds for Refusal

Article 7(1) EUTMR lists the grounds on which a mark shall be refused registration. The most commonly invoked are:

(a) Signs Not Capable of Constituting a Trade Mark

The sign must be capable of distinguishing the goods or services of one undertaking from those of another. Abstract concepts, overly simple shapes, or single letters/numbers without stylisation may fail this test.

(b) Marks Devoid of Distinctive Character

The mark must possess inherent distinctiveness — it must be perceived by the relevant public as identifying the commercial origin of the goods or services. Common words, generic phrases, and commonplace designs are typically refused.

Examples of refusals:

• "BEST QUALITY" for manufactured goods — purely laudatory
• A plain green rectangle for financial services — non-distinctive shape
• "123" in standard characters for software — common numerical expression

(c) Descriptive Marks

Marks that consist exclusively of signs or indications that describe:

• The kind, quality, quantity, or intended purpose of the goods/services
• Geographic origin (e.g., "PARIS FASHION" for clothing)
• Time of production or other characteristics

The test is whether the mark describes the goods/services directly and immediately from the perspective of the relevant EU public.

(d) Customary Signs or Indications

Terms that have become customary in the current language or in the bona fide and established practices of the trade. For example, "ASPIRIN" is generic in some countries for pain relief medication.

The GTC advantage: If your EUTM application receives a provisional refusal, our office action response service can help you craft a compelling legal argument — including evidence of acquired distinctiveness — to overcome the examiner's objection.

Other Absolute Grounds

Less commonly invoked but still important:

(e) Shape and Characteristics

Shapes (or other characteristics) that result from the nature of the goods, are necessary to obtain a technical result, or give substantial value to the goods. This prevents trademark protection from substituting for design or patent rights.

(f) Public Policy and Morality

Marks contrary to public policy or accepted principles of morality. This includes offensive terms, hate speech, and symbols with deeply negative connotations across EU member states.

(g) Deceptive Marks

Marks that are of such a nature as to deceive the public, for example as to the nature, quality, or geographical origin of the goods or services. A mark suggesting Swiss origin for goods manufactured in China would be deceptive.

(h) State Emblems and Official Signs

Marks incorporating state emblems, flags, or symbols of international organisations protected under the Paris Convention (Article 6ter).

(i) Protected Geographical Indications

Marks that conflict with protected designations of origin (PDOs), protected geographical indications (PGIs), or traditional terms for wines and spirits.

The Multilingual Test

Under Article 7(2), a mark is refused if any absolute ground applies in any part of the EU, not just the applicant's home territory. This means:

• A word that is descriptive in German can be refused even if it is distinctive in all other EU languages
• A term that is generic in Italian will block the EUTM even if it is a coined word in English
• The examiner checks across all 24 official EU languages

This is one of the most challenging aspects of EUTM examination — a mark that works perfectly in English may be descriptive in another EU language.

Responding to a Provisional Refusal

If the examiner identifies an absolute ground, EUIPO issues a provisional refusal (also called an "objection letter"). You typically have 2 months to respond (extendable by 2 months on request).

Response Strategies

1. Argue distinctiveness — demonstrate that the mark is not descriptive or that it possesses sufficient inherent distinctiveness when considered as a whole
2. Submit evidence of acquired distinctiveness — under Article 7(3) EUTMR, a mark that has acquired distinctive character through use in the EU can overcome an absolute grounds refusal. Evidence must cover a substantial part of the EU
3. Amend the specification — narrow the goods/services list to remove items for which the mark is descriptive
4. Amend the mark — in limited cases, modify the representation (though this is restricted to changes that do not alter the identity of the mark)
5. File observations — provide legal arguments citing EUIPO case law and Board of Appeal decisions supporting registrability

Evidence of Acquired Distinctiveness

To prove acquired distinctiveness under Article 7(3), submit:

• Sales figures and market share data across EU member states
• Advertising expenditure and marketing materials
• Consumer surveys demonstrating brand recognition
• Media coverage and press mentions
• Duration and extent of use in the EU
• Evidence from multiple EU member states (not just one country)

Appeal to the Board of Appeal

If the examiner maintains the refusal after your response, you can appeal to EUIPO's Board of Appeal within 2 months of the refusal decision. The appeal fee is EUR 720.

The Board of Appeal conducts a full review of the case, including new evidence and arguments. Board of Appeal decisions can be further appealed to the General Court of the European Union.

Common Examination Pitfalls

1. Filing descriptive brand names — terms that describe what your product does are almost certain to be refused
2. Ignoring the multilingual test — check your mark's meaning in all EU languages, not just English
3. Insufficient acquired distinctiveness evidence — evidence from one country is not enough; you need substantial EU-wide coverage
4. Missing response deadlines — the 2-month deadline is strictly enforced; late responses are not accepted
5. Filing non-distinctive logos — simple geometric shapes or commonplace imagery without distinctive elements

How to Increase Your Chances of Passing Examination

• Search thoroughly before filing to understand the competitive landscape
• Choose inherently distinctive marks — coined words, arbitrary terms, or suggestive marks
• Use TMclass-accepted terms for your goods/services to qualify for Fast Track processing
• Consider filing a figurative mark (logo) if your word element is borderline distinctive
• Consult a trademark attorney familiar with EUIPO examination standards

👉 Start with a free trademark check to assess your mark's strength, or contact our team for professional guidance on filing strategy and examination responses.