Grounds for Refusal
An EUTM may be refused if it comes under an absolute ground or a relative ground for refusal.
The absolute grounds for refusal will be examined ex officio by the EUIPO and they are as follows:
(a) Signs of which a trademark may not consist pursuant to Art. 4 EUTMR, i.e.: signs which are not capable of distinguishing the goods or services of one undertaking from those of another undertaking;
(b) Signs which are devoid of any distinctive character;
(c) Signs which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service;
(d) Signs or indications which have become customary in the current language or in bona fide and established practices of the trade;
(e) Signs which consist exclusively of (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;
(f) Trademarks which are contrary to public policy or to accepted principles of morality;
(g) Trademarks which are of such a nature as to deceive the public, for instance as to the nature, quality or geographical origin of the goods or service;
(h) Trademarks which have not been authorized by the competent authorities and are to be refused pursuant to Article 6ter of the Paris Convention for the Protection of Industrial Property;
(i) Trademarks which include badges, emblems, or escutcheons other than those covered by Article 6ter of the Paris Convention and which are of particular public interest, unless the consent of the competent authority to their registration has been given;
(j) Trademarks which are excluded from registration, pursuant to Union legislation or national law or to international agreements to which the Union or the Member State concerned is party, providing for protection of designations of origin and geographical indications;
(k) Trademarks which are excluded from registration pursuant to Union legislation or international agreements to which the Union is party, providing for protection of traditional terms for wine;
(l) Trademarks which are excluded from registration pursuant to Union legislation or international agreements to which the Union is party, providing for protection of traditional specialties guaranteed;
(m) Trademarks which consist of, or reproduce in their essential elements, an earlier plan variety denomination registered in accordance with Union legislation or national law, or international agreements to which the Union or the Member State concerned is a party, providing for protection of plant variety rights, and which are in respect of plan varieties of the same or closely related species.
The relative grounds for refusal will only be examined by the EUIPO if there is a third party opposition. Through the application of these grounds, EUTMs are not registered if they are identical with or similar to earlier trademarks, covering identical or similar goods or services (although the goods or services need not be identical or similar if the earlier trademark is reputed). Earlier trademarks means: (a) EUTMs and EUTM applications, national trademarks of a Member State of the EU (including those registered at the Benelux Trade Mark Office) and international trademarks having effect in a Member State of the EU and in the EU itself; (b) trademarks which are well-known in a Member State of the EU, in the sense of Art. 6bis PUC. There will also be a relative ground for refusal when the EUTM comes under Art. 6septies PUC (mark applied for by an agent or representative) or when there is another sign used in the course of trade of more than mere local significance; (c) designations of origin or geographical indications.
At the request of the applicant, the proprietor of the opposing trademark must submit proof of use of the mark on which he bases the opposition (see third paragraph of section VI). In the absence of such proof, the opposition will be rejected.