EU Trademarks | Absolute And Relative Grounds For Refusal Or Invalidity - Wordmark Analysis

Due to the increasingly competitive nature of business, entrepreneurs and companies are looking to differentiate themselves from their competitors, by securing and protecting their trademarks and brands, which serve to identify their products or services. By registering a trademark, the owner is capable of pursuing legal action if someone uses his/her/its trademark without prior authorisation. Further, during the application for the registration of a trademark, an existing trademark owner may oppose to such application if it adversely affects his/her/its own sign. Furthermore, according to Article 3 of EU Directive 2015/2436 (hereinafter the 'EU Directive') " trademark may consist of any signs, in particular words, including personal names, or designs, letters, numerals, colours, the shape of goods or the packaging of goods or sounds provided that such signs are capable of:

Distinguishing the goods and services of one undertaking from those of other undertakings; and Being represented on the register in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor." Particularly, according to Faber Chimica Srl v European Union Intellectual Property Office Case T-211/03 a word mark is a mark consisting entirely of letters, words or associations of words, written in printed characters in normal font without any specific graphic element.

A word can be objected from a trademark registration based on Articles 4 or 5 of the EU Directive. Each Article will be examined in turn.

ABSOLUTE GROUNDS FOR REFUSAL OR INVALIDITY (ARTICLE 4 OF THE EU DIRECTIVE)

Article 4 of the EU Directive governs the absolute grounds for refusal of the registration of a trademark or invalidity considers the mark itself.

Further to Article 4(1)(a) of the EU Directive a wordmark should not be registered if it does not fulfill the trademark definition under Article 3 of the EU Directive.

Under Article 4(1)(b) of the EU Directive a wordmark must not be devoid of distinctive character. In order to be distinctive, a sign must serve to identify the product and/ or services in respect of which registration is applied for as originating from a particular undertaking and thus to distinguish the goods and/ or services from those of other undertakings as per Windsurfing Chiemsee Produktions- und Vertriebs GmbH (WSC) v Boots- und Segelzubehör Walter Huber and Franz Attenberger Joined Cases C-108/97 and C-109/97.

A wordmark's distinctiveness should be assessed in terms of the goods or services in respect of which registration is sought and then to the relevant public's perception of the aforementioned sign as per Eurohypo AG v Office for Harmonisation in the Internal Market (Trade Marks and Designs) Case C-304/06 P.

An objection under Article 4(1)(b) of the EU Directive is likely to apply in cases where the lexical structure that has been used, despite her non-right grammatical form can be considered to be frequent in advertising language and in the commercial context at issue. In the case of...