For a sign to be capable of being registered as an EU trade mark, it must be distinctive across the entire European Union. This was confirmed by the Court of Justice of European Union (ECJ) in a ruling from 25 July 2018.

According to the ECJ’s case law, a sign lacking original distinctive character can only be registered as an EU trade mark if it has acquired distinctive character in the part of the EU where it previously lacked this quality. The relevant part of the EU may consist of a single member state. We at the commercial law firm GRP Rainer Rechtsanwälte note that for the purposes of registering such a mark, it is not enough to demonstrate that it has acquired this distinctive character across a significant portion of the EU.

It is in light of this that the European Union Intellectual Property Office (EUIPO) must now re-examine whether the registration of the three-dimensional shape of a chocolate bar as an EU trade mark ought to be upheld following a ruling of the ECJ from 25 July 2018 (Az.: C-84/17 P). The EUIPO had registered the sign as an EU trade mark as early as 2006. Another food producer requested that the mark be declared invalid but to no avail. The EUIPO rejected the request, reasoning that the mark had acquired distinctive character by virtue of its use within the EU.

However, the General Court of the European Union overturned this decision in late 2016, ruling that the necessary distinctive character had only been demonstrated with respect to part of the European Union but not in relation to the rest of the relevant public. The EUIPO and the trade mark owner were skeptical of whether it is necessary for the owner of a trade mark to demonstrate distinctive character with regard to each and every member state, arguing that this is not consistent with the principle of uniformity of EU trade marks or indeed the single market.

The ECJ has since reaffirmed the Court’s decision in a recent ruling, stating that while it is not necessary to prove that the mark in question has acquired distinctive character through use in relation to each and every member state of the EU, the evidence presented must be capable of demonstrating that distinctive character has been acquired in all member states where the sign previously lacked original distinctive character. It now falls to the EUIPO to adjudicate once again on the registration of the mark.

Lawyers who are experienced in the field of intellectual property law can advise on all matters pertaining to trade mark registration and protection.