What Can Stop a Trade Mark Being Registered in the EU?

The law relating to trademark registration using the European Union's Community Trademark System is similar to that which covers trademarks in the UK. The key difference is that whereas in the UK a trademark application can be refused on both absolute grounds and relative grounds, in the EU it can only be refused on absolute grounds.

Absolute grounds for refusing a trademark application include where that trademark would offend against publicly accepted standards of morality or contravene government policy. The application will also be refused if it is likely to mislead the public about the nature, place of manufacture or quality of the goods or services.

If the trademark represents the shape of the goods to which it is to apply then that also constitutes a grounds for refusal. Similarly, the application will be refused if the trademark represents a shape to which the goods would need to conform in order to achieve a particular technical outcome or which would give the goods substantial added value. A final absolute basis for refusal of a trademark application is if the trademark would be devoid of distinctive character.

Applicants should be aware that while relative grounds for refusal are not considered by the Office for Harmonisation in the Internal Market, there is a procedure for challenges to be made to trademarks on relative grounds after they have been granted.

Relative grounds for challenges involve claims that a trademark is similar to an already existing trademark or copyrighted item. For example, a successful challenge could be mounted if a new trademark is identical to an existing trademark for an identical class of goods. Challenges can also be mounted if a new trademark is merely similar to an existing trademark or where the existing trademark covers a similar class of goods if this could cause public confusion.

Another grounds for a challenge is where a new trademark is similar to an existing trademark that applies to a completely different class of goods where this may lead to the distinctive character or the reputation of the existing trademark being infringed. Finally, there may be grounds for a challenge if the trademark infringes copyrighted material or if it infringes a name or logo that has been established in use by a business. Applicants should be aware that due to the size of the EU, there is significant scope for challenges to be mounted to new Community Trademarks.