What Can I Trademark? What Can’t I Trademark?

Certainly, the first and most important step in protecting your business is making the decision to register your trademark. That being said, before doing that, you must know and be informed about the requirements for registering a trademark.

An EU trademark can consist of any signs, in particular words (including personal names), or designs, letters, numerals, colours, the shape of goods, the packaging of goods or even sounds.

Until 1 October 2017, it was absolutely necessary to have a graphical representation for a trademark application. But, as a result of the Amending Regulation (EU) 2015/2424, as long as your trademark can be represented by the accepted formats, the trademark application can be submitted without having to represent it graphically.

Depending on what you would like to protect (a word, a figure, a colour, etc.), you have different trademark options.

The signs that constitute a trademark must be used to distinguish the goods and services that you provide. To be eligible for registration, your trademark must be distinctive and not describe what you sell. Below you can read a list of the most important requirements.

Your trademark should be distinctive

Consumers should be able to recognise your sign for what it is. It should distinguish you from other companies in the marketplace so that you can protect and build your brand identity and value.

Distinctiveness leads to the fulfillment of the most important function of a brand, namely the ability to differentiate the products and services of an economic agent from those of other economic agents. A mark is devoid of individual character when it fails to fulfill that function. The lack of distinctiveness may also result from aspects listed in other absolute grounds for refusal.

If a company wishes to identify by just one character, it is necessary to add a figurative element (logo). For example, the European registered trademark “f” is owned by Facebook, Inc., 009724774 – F.

Also, as a requirement, a trademark doesn’t have to be composed solely of commonly used signs or indications (current or commercial practices) or used to designate certain characteristics such as species, quality, quantity, destination, geographical origin, etc.

Your trademark should not describe what you sell

Your trademark should not create a monopoly over a sign that merely describes the goods and/or services that you offer. Such signs should remain available for everybody: for you and your competitors.

The trademark should not to be exclusively constituted by the shape of the product

If a shape of a product is required by its nature or if it is necessary to obtain a technical result which gives substantial value to the product, it cannot be the sole object of protection of a trademark. For example, the LEGO brick was annulled in Case C-48/09.

The trademark should not mislead about origin, quality or nature

In particular, the mark must not contain elements which could refer to another type of product, thereby misleading the costumer. For example, we cannot register the brand “FISH” for chicken meat products because the consumer will be misled by believing that he will buy fish meat instead of chicken meat.

A trademark should not to be contrary to the public order, good morals or to contain elements of high symbolic value or religious symbols

This absolute ground of refusal relates to the fact that the formation of a trademark must not include insults, words or obscene images, incitements or indications that may disturb or affect public order or good morals.

Also, religious symbols (crosses, icons, images of religious personalities, etc.) or elements of high symbolic value should not be used for the trademark.

Items requiring special authorization

No reproductions or imitations of emblems, flags and colors, insignia, badges, or heraldic signs may be used in the brand content or in the commercial activity, without the consent of the competent authorities or the right holder.

In order not to fall into the absolute grounds for refusal, we strongly recommend that you contact us for professional guidance.