European Union: 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:

  1. Distinguishing the goods and services of one undertaking from those of other undertakings; and
  2. 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.


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 Bayerische Motoren Werke AG v OHIM (ECO PRO)(Case T-145/12) 2013/C 164/30, the combination of 'ECO PRO' was held to be perceived by the public as an indication that the designated goods are intended for 'ecological professionals' or are 'ecological supporting'.

Furthermore, words are not considered distinctive if they are commonly used and have lost any capacity to distinguish goods and services. For instance, terms that are just showing a particular positive or appealing quality or function of the goods and services should be refused if applied for either alone or in combination with descriptive terms. For instances the term MEDI referring to medical as per Medi GmbH & Co. KG v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) T-470/09 has been refused either alone or in combination. Similarly the term PREMIUM as referring to 'best quality'.

In OHIM v BORCO-Marken-Import Matthiesen GmbH & Co. KG C-265/09 the Court of Justice ruled that when trademarks consist of single letters it is important to assess whether the sign at issue is capable of distinguishing the different goods and services. For instance the single letter 'C' for 'fruit juices' is likely to be devoid of distinctiveness since the letter 'C' is often used to refer to vitamin C. On the other hand the letter 'W' in R1008/2010-2 case was accepted as distinctive in respect of 'transport; packaging and storage of goods; travel arrangement' in class 39 and class 43 'services for providing food and drink; temporary accommodation'.

Generally, advertising slogans are objectionable under Article 4(1)(b) of the EU Directive when the relevant public perceives them as a mere promotional formula. However, in Smart Technologies ULC v OHIM C-311/11P the Court of Justice held that it is inappropriate to apply stricter criteria regarding slogans in terms of assessing their distinctiveness. In Audi AG v OHIM C-398/08 P the court listed a number of criteria which should be used when assessing the distinctiveness of a slogan. A slogan is likely to be perceived as more than a mere advertising message if it:

  • Has more than one meanings;
  • Constitutes a play on words;
  • Introduces elements of conceptual intrigue or surprise;
  • Includes a particular originality or resonance;
  • Triggers a cognitive process to the minds of the relevant process or requires an interpretative effort;
  • Existence of unusual syntactic structures;
  • Use of linguistic and stylistic devices i.e. metaphor, rhyme.

For instance, in Blackrock, Inc. v OHIM T-609/13 the slogan 'SO WHAT DO I DO WITH MY MONEY' for classes 35 and 36 was objected under Article 5(1)(b) since the expression prompts consumers to ask themselves what they should do with their assets and financial resources. On the facts of the case the average reasonably well-informed and reasonably observant and circumspect consumer of the application services on reading the slogan asks himself/herself whether he/she is using his/her money effectively. On the other hand, the slogan 'WET DUST CAN'T FLY' for classes 3, 7 and 37 under the case Pro-Aqua International GmbH v OHIM T-133/13 was accepted since the concept of 'wet dust' is literally inaccurate, consequently giving slogan a fanciful and distinctive character.

Further to Article 4(1)(c) of the EU Directive a word must be refused as descriptive if it has the meaning which is immediately perceived by the relevant public as providing information about the goods and services applied for. For instance if the word provides information about, "the quality, quantity, characteristics, purpose, kind, size of the goods or services". Descriptive terms cannot fulfil the function of a trade mark.

For instance in Abbott Laboratories v OHIM C-21/12 P the term 'RESTORE' was held descriptive for surgical and medical instruments. However, in Merz & Krell GmbH & Co C-517/99 the word 'BRAVO' was not considered descriptive since it was unclear who says 'BRAVO' to whom under what circumstances.

Furthermore, a mere combination of elements each of which are considered descriptive, it would be concluded that the whole element remains descriptive.

Additionally, under Article 4(1)(f) and(g) of the EU Directive a word would be refused if it is contrary to public policy or is of such nature as to deceive the public.


Apart from the absolute grounds of refusal, a word mark can be objected under Article 5 further to the relative grounds for refusal or invalidity.

Under Article 5(1)(a) of the EU Directive a word mark should not be registered or if registered should be declared invalid if it is identical with an earlier trade mark and the applied goods are services are identical with earlier trademark.

Additionally, under Article 5(1)(b) of the EU Directive a word mark should not be registered or if registered should be declared invalid if it is similar or identical with an earlier trade mark and identical or similar goods or services are covered by the trade mark which establishes a likelihood of confusion on the part of the public.

A likelihood of confusion exists if there is a risk that the public might believe that the concerned goods or services come from the same undertaking or from economically-linked undertakings. If part of the relevant public is confused is sufficient. Further to the case of SABEL BV v Puma AG, Rudolf Dassler Sport C-251/95 at paragraph 23 the court held that the global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components.

The first step in assessing if a likelihood of confusion exists depends on the overall assessment of the following independent factors including (1) the similarity of goods and services (2) the similarity of the signs (3) the distinctive and dominant elements of the conflicting signs (4) the distinctiveness of the earlier mark (5) the relevant public. The second step is to determine their relevance.

An objective comparison of the word marks needs to be made. All the elements of the signs are taken into account irrespective of their distinctiveness or dominance.

Identical marks

Further to 'LTJ Diffusion' (Arthur et Felicie) C/291/100 case a sign would be considered identical to the earlier trademark 'where it reproduces without any modification or addition, all the elements constituting the trade mark or where, viewed as a whole, it contains differences so insignificant that they may go unnoticed by an average consumer' .

Word marks are considered identical if both are purely word marks and overlap exactly in the string of letters or numbers. Differences in the use of lower or upper case or the typeface are immaterial.

Similar marks

Further to 'Maratzen' T-6/01 case, two marks are similar if in the relevant public's point of view are at least partially identical regarding one or more relevant aspects. The comparison must consider the signs in their entirety.

In C-334/05 P 'Limoncello' case where negligent elements exist, the EUIPO is likely to skip comparing such elements from the outset after having duly reasoned why they are considered to be negligible.

Visual comparison

The visual comparison is based on an analysis of the number and sequence of the letters/characters, their position and the structure. However, due to the fact that the average consumer perceives a sign as whole, small differences such as the number of letters is not enough to exclude a finding of visual similarity.
In some cases figurative marks with word elements may be compared with word marks visually. What matters is whether the signs share a crucial number of letters in the same position and whether the word element in the figurative sign is highly stylized. Similarity can be found even though the letters are graphically represented in different typefaces, in italics or bold, in upper or lower case or in colour.

Phonetic comparison

For this assessment all the different pronunciations of the signs by the relevant public in all the official languages under which the earlier mark has been registered need to be examined. Local accents are not taken into account. In the case that a likelihood of confusion for at least one Member state and it is justifiable for reasons of economy of procedure, the EUIPO's analysis does not need to extend to the whole EU, instead it can focus on just a part or parts where the likelihood of confusion exists.

The key elements for determining the overall phonetic impression of a trademark are the syllables and their particular sequence of stress. In the case that the opposing marks are formed by identical or similar syllables or words but in a different order, it would be concluded that signs are phonetically similar. In the case of T-67/08 'HEDGE INVEST' and 'InvestHedge' were considered as phonetically similar.

A sign that contains foreign words, generally it will be assumed that the relevant public is not aware how foreign native speakers pronounce their own language and the pronunciation will depend on the phonetic rules of their own language. However, in the case when the relevant public is familiar with the word the correct pronunciation will be considered.

Conceptual comparison

Further to the Sabel case two signs will be considered similar or identical in concept when they are perceived as having the same or analogous semantic content. Semantic content considers what the mark means, evokes. The essential element is how the term is perceived by the relevant public.

When a wordmark is involved, the examiner will consider dictionaries and/or encyclopedias explanations of the word, in the language of the relevant territory. A complete dictionary definition is not always essential. It may be sufficient to use a synonym such storm=bad weather in Engelhorn KGaA v OHIM T-30/09.

Additionally, when the mark consists of a meaningful expression the meaning of such expression as a whole will be relevant for the conceptual comparison.

However, even if the average consumer normally perceives a mark as a whole, exceptionally when perceiving a word mark, he will break it down into elements. For instance when the sign itself is broken down visually or when all the parts suggest a common meaning known to the relevant public.

Finally, it is not essential for a word to be written properly for its semantic content to be perceived by the relevant public.

Taking everything into consideration, in order for a wordmark to be registered as a trademark and "pass" the hurdles under Articles 4 and 5 of the EU Directive, an extensive analysis should be made to consider both the mark as whole and its individual characteristics in the light of the specifics of each case. For the smooth registration of your wordmark, the correct legal guidance is crucial.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:
  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.
  • Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.
    If you do not want us to provide your name and email address you may opt out by clicking here
    If you do not wish to receive any future announcements of products and services offered by Mondaq you may opt out by clicking here

    Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

    Use of

    You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


    Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

    The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


    Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

    • To allow you to personalize the Mondaq websites you are visiting.
    • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
    • To produce demographic feedback for our information providers who provide information free for your use.

    Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

    Information Collection and Use

    We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

    We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

    Mondaq News Alerts

    In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


    A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

    Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

    Log Files

    We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


    This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

    Surveys & Contests

    From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


    If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


    From time to time Mondaq may send you emails promoting Mondaq services including new services. You may opt out of receiving such emails by clicking below.

    *** If you do not wish to receive any future announcements of services offered by Mondaq you may opt out by clicking here .


    This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

    Correcting/Updating Personal Information

    If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

    Notification of Changes

    If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

    How to contact Mondaq

    You can contact us with comments or queries at

    If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.

    By clicking Register you state you have read and agree to our Terms and Conditions