When it comes to selecting your trademark, it is important to understand what inherently cannot be registered as a trademark. Most countries have rules which dictate that anything that does not meet a specific registrability criteria, will be denied trademark registration on absolute grounds.
If a trademark application is refused, trademark registration fees will not be refunded and your trademark may be later declared invalid even if it does get registered. So, it is essential to make sure that your selected mark has a good chance of standing the test.
Here is a general list of the types of signs that cannot be registered as trademarks in the member states of the European Union according to the Directive 2015/2436 (Trade Marks Directive).
Anything that is not a sign. Signs may be, for example, words, designs, letters, numbers, colours, shapes of goods or of the packaging and sounds. The most common type of signs that can be used as trademarks are names and logos. If you are looking to trademark something exotic, for example, a washing powder grain, note that it may not qualify as a sign.
Signs that cannot be properly represented on the register. If a sign cannot be entered in the trademark register in a sensible manner, such a sign should not be registered. The trademark register, in essence, is a public database that allows anyone to verify whether a sign that they plan to trademark, would infringe on any of the existing marks. This would not be possible, if a trademark record did not allow to clearly determine what the trademark is and what it protects.
Non-distinctive signs. Distinctiveness is the most important characteristic of any trademark. It is the ability of a trademark to distinguish the goods or services of one undertaking from those of other undertakings. If a sign lacks any distinctiveness, it cannot serve as a trademark. The relevant consumers should be able to perceive the sign as such that identifies the goods or services in question. For example, a sign that lacks any distinctiveness, is the word “hot” on a bottle of chilli sauce. That is because the relevant public would perceive it as denoting a quality of the product rather than being a brand.
Descriptive signs. Descriptive signs are similar to non-distinctive signs – they merely provide information about the goods and services applied for, but do distinguish these goods and services in the eyes of consumers. For example, the word “restore” is descriptive for surgical and medical instruments.
Signs that are customary in trade. This mainly refers to descriptive terms that are widely used in business or specialist jargon and symbols. For example, the word “hotdog” for hotdogs or the “high voltage symbol” covering goods in class 9.
Signs consisting of certain shapes or characteristics. The following signs are excluded from registration: (i) the shape, or another characteristic, which results from the nature of the goods themselves; (ii) the shape, or another characteristic, of goods which is necessary to obtain a technical result; (iii) the shape, or another characteristic, which gives substantial value to the goods. The aim of the rule is to prevent registration of trademarks that seek to protect other intellectual property rights, such as designs or patents. Examples of what cannot be trademarked: a realistic representation of a banana for bananas, a model of a Lego brick for small plastic stackable bricks and an exclusive design of a loudspeaker for loudspeakers.
Signs which are contrary to public policy or to accepted principles of morality. This includes signs that contradict the basic principles and fundamental values of democratic society or that consist of blasphemous, racist, discriminatory or insulting words or phrases.
Deceptive signs. Such signs either create an actual deceit or a sufficiently serious risk that the consumer will be deceived, for instance, as to the nature, quality or geographical origin of the goods or services. In essence, a deceptive sign would convey some type of a false message. For example, “DE-NIC” could not be registered for cigarettes that are not nicotine free.
Signs that are contrary to Article 6ter of the Paris Convention. Member states of the European Union will refuse the registration of trademarks that incorporate armorial bearings, flags, and other state emblems, of the countries that are party to the Paris Convention, official signs and hallmarks indicating control and warranty adopted by them, and any imitation from a heraldic point of view.
Signs that reproduce an earlier plant variety denomination. A plant variety denomination is the generic name for a specific plant variety. Examples: Golden Delicious and Jonagold apples. Any signs that consist of, or reproduce in their essential elements, an earlier registered plant variety denomination registered in accordance with the European Union legislation, national law or international agreements to which the European Union or the member state concerned is a party, will be refused registration.
The rules concerning trademark registrability in the European Union are complex and despite constant harmonization efforts, may be interpreted differently in different member states. Nevertheless, the above list should provide an idea of what to expect when you seek to register a trademark in the European Union. Detailed information is available in the guidelines of the European Union Intellectual Property Office (EUIPO).