How to protect your TM in the EU

After filing an application for registration of a trademark in the EU, an examination procedure is carried out with respect to each mark applied for registration. As a result of such examination, the trademark applicant may receive a preliminary examination conclusion - about a possible refusal to register a mark. Such notice must necessarily state the reasons for refusing registration. The reasons for the preliminary refusal to register a trademark must be justified by legislative norms. 

In this article, we will consider the reasons for refusing to register TM, as well as the precedent with the registration of a trademark denoting color.

Reasons for refusal to register TM

All legal grounds for refusal to register a trademark in the EU are reflected in the European Union Trademark Regulation (EUTMR).

Reasons for a preliminary refusal to register a trademark must be justified by legislative standards, for example:

• the trademark is identical or similar to the extent of confusion with the trademark previously registered in the EU in the name of another person;
• the trademark is a direct indication of the product/service, and does not have distinctive characteristics;
• the trademark may mislead consumers in relation to goods or services, and/or in relation to the person who produces goods/services;
• other reasons for refusing registration.

Colour trademark protection

Colour TMs are subject to protection if they are not perceived as a description describing the characteristics of TMs that are inherent in the nature of the respective goods or services (General Court of the European Union).

In the present case, the applicant requested that the trademark be registered as the word “vita”. The European Union Intellectual Property Office (EUIPO) rejected the application, citing the European Union Trademark Regulation (EUTMR). In more detail, it indicated that the sign is a certain plural form of the word “vit”, which means “white” in Swedish. The application for registration of TM indicated that the mark was intended to indicate household goods, which means that they can exist in white colour, and therefore this mark can be descriptive for them.

The European Court of General Jurisdiction has not confirmed these findings. According to its decision, the color “white” (“vita”) did not meet this requirement, since this color designation does not have any direct and immediate connection with the goods provided.

Effects

Taking into account the strict approach of the European courts regarding the absolute grounds for refusal of trademarks registration, this decision was surprising for many experts since it may mean that the registration of trademarks that indicate the characteristics of a product or service that may be appropriate for the product or service is not prohibited.

In addition to color, this may also apply, for example, to the shape and size or proportionality of the trademark. However, such a precedent is still single and it is not yet known whether this new example of case law will become regular.