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 trademark 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 trademark that will pass examination.
Pro tip: Before filing, run a free trademark check to assess whether your proposed trademark 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 (owner details, trademark representation, goods/services list) are present
- Fee payment: the applicable government fees have been paid
- Classification accuracy: goods and services are correctly assigned to Nice classes using accepted TMclass terminology
- Representation clarity: the trademark 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 trademark falls foul of any prohibition under Article 7 EUTMR. If terms like "absolute grounds," "distinctive character," or "acquired distinctiveness" are new to you, our trademark glossary has short definitions.
Article 7: Absolute Grounds for Refusal
Article 7(1) EUTMR lists the grounds on which a trademark shall be refused registration. The most commonly invoked are:
(a) Signs Not Capable of Constituting a Trademark
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 stylization may fail this test.
(b) Trademarks Devoid of Distinctive Character
The trademark 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 Trademarks
Trademarks 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 trademark describes the goods/services directly and immediately from the perspective of the relevant public in the European Union.
(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. Our professional fee is quoted before we start.
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
Trademarks contrary to public policy or accepted principles of morality. This includes offensive terms, hate speech, and symbols with deeply negative connotations across European Union member states.
(g) Deceptive Trademarks
Trademarks 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 trademark suggesting Swiss origin for goods manufactured in China would be deceptive.
(h) State Emblems and Official Signs
Trademarks incorporating state emblems, flags, or symbols of international organizations protected under the Paris Convention (Article 6ter).
(i) Protected Geographical Indications
Trademarks 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 trademark is refused if any absolute ground applies in any part of the European Union, not just the owner's home country. This means:
- A word that is descriptive in German can be refused even if it is distinctive in all other European Union 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 languages of the European Union
This is one of the most challenging aspects of EUTM examination. A trademark that works perfectly in English may be descriptive in another European Union 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
- Argue distinctiveness: demonstrate that the trademark is not descriptive or that it possesses sufficient inherent distinctiveness when considered as a whole
- Submit evidence of acquired distinctiveness: under Article 7(3) EUTMR, a trademark that has acquired distinctive character through use in the European Union can overcome an absolute grounds refusal. Evidence must cover a substantial part of the European Union
- Amend the specification: narrow the goods/services list to remove items for which the trademark is descriptive
- Amend the trademark: in limited cases, modify the representation (though this is restricted to changes that do not alter the identity of the trademark)
- 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 European Union member states
- Advertising expenditure and marketing materials
- Consumer surveys demonstrating brand recognition
- Media coverage and press mentions
- Duration and extent of use in the European Union
- Evidence from multiple European Union 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
- Filing descriptive brand names: terms that describe what your product does are almost certain to be refused
- Ignoring the multilingual test: check your trademark's meaning in all European Union languages, not just English
- Insufficient acquired distinctiveness evidence: evidence from one country is not enough; you need substantial coverage across the European Union
- Missing response deadlines: the 2-month deadline is strictly enforced; late responses are not accepted
- 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 see which similar trademarks already exist
- Choose inherently distinctive trademarks: coined words, arbitrary terms, or suggestive trademarks
- 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
- File through an experienced trademark attorney familiar with EUIPO examination standards. Our EU trademark service includes a distinctiveness review before filing
The full European Union filing process, from representation to timelines, is summarized in our European Union country guide.
Start with a free trademark check to assess your trademark's strength, or contact our experienced attorneys for professional guidance on filing strategy and examination responses.
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Frequently Asked Questions
Does EUIPO check for conflicts with existing trademarks?
No. EUIPO only examines absolute grounds under Article 7 EUTMR (descriptiveness, distinctiveness, etc.). It does not search for or refuse trademarks based on earlier rights. Conflict-based challenges come from third parties during the opposition period.
What happens if my EUTM application is partially refused?
If the trademark is descriptive for some goods/services but not others, EUIPO may issue a partial refusal. You can accept the refusal for those items and proceed with registration for the remaining goods/services.
How long do I have to respond to an EUIPO examination objection?
You typically have 2 months from the date of the objection letter. This can be extended by a further 2 months on request. After the extended deadline, no further extensions are granted.
Can I overcome a descriptiveness refusal?
Yes, through two main routes: (1) arguing that the trademark is not descriptive when considered as a whole in context, or (2) submitting evidence of acquired distinctiveness under Article 7(3) EUTMR demonstrating that the trademark has become distinctive through extensive use across a substantial part of the European Union.
How much does it cost to respond to an EUIPO refusal?
EUIPO charges no fee for filing a response to a provisional refusal. An appeal to the Board of Appeal costs EUR 720. Our professional fee for preparing the response is quoted on the office action response service page.
Is examination different for Fast Track applications?
The substantive examination criteria are identical. Fast Track means the formalities check is expedited (often within days) because the application uses pre-approved TMclass terms and e-filing. Absolute grounds assessment applies equally to all applications.
Do I need to show acquired distinctiveness across all 27 member states?
Not necessarily all 27, but across a substantial part of the European Union. The evidence must cover a geographically and demographically significant portion of the Union. Evidence from just one or two small member states is unlikely to suffice.
