Why was my trademark application rejected by the office?
A trademark plays a crucial role in distinguishing products and services in the marketplace. Registering a trademark is an important element of a business strategy for protecting intellectual property rights and building company reputation. However, the registration process doesn’t always proceed smoothly, and the IP Office sometimes refuses to register trademarks.
In this comprehensive guide, we explain the main reasons why a trademark registration refusal can occur on official grounds – before te IP offices in the European Union, especially before the EUIPO (European Union Intellectual Property Office).
Formal requirements for a trademark registration
The conditions for registering a trademark are established by law. For Polish trademarks filed with the Polish Patent Office (UPRP), these requirements are set out in the Polish Industrial Property Law Act. For EU trademarks registered with EUIPO, the conditions are contained in Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark.
For an IP office to even consider a trademark application, formal requirements must be met. A trademark application must include:
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Complete contact details of the applicant
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A clear representation of the trademark
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A specification of goods and services for which the trademark is intended
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Timely payment of the application fee
If the application contains formal deficiencies, the office will request their correction within a set deadline. If the application includes errors or inaccuracies that could mislead regarding the scope of protection, the office will request their correction.
Most common grounds for a trademark registration refusal
Before the office publishes information about a trademark application in the official gazette, it examines whether the mark meets the so-called absolute grounds for refusal. If it does not meet these grounds, the office refuses to register such a trademark on official grounds. The most common reasons for such refusal are:
1. Lack of distinctive character
If a trademark is not capable of distinguishing goods in the trade for which it was registered, it may be rejected. This occurs when the sign consists exclusively of elements that cannot identify a specific enterprise, service, or product.
Examples:
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 |
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| EUTM-005332184 | Z.215529 | EUTM-000873943 | Z.220995 |
2. Descriptivenes
A trademark that describes features of a product or service may also be rejected. This applies when the trademark consists exclusively of elements that could be used in trade to indicate, in particular, the type of product, its origin, quality, quantity, value, intended purpose, method of manufacture, composition, function, or usefulness.
Examples:
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PIZZA-EXPRESS | FIND YOUR WAY |
| 3. Cosmetics, Beauty and body care products | 39: transportation, travel information | 43: restaurant services | 9: satellite navigation systems |
| EUTM-008294233 | EUTM-012460044 | Z.110572 | EUTM-004652731 |
3. Common use and generic character
When a trademark consists exclusively of elements that have become part of everyday language or are customarily used in honest and established trade practices, registration becomes difficult. Such marks cannot uniquely identify a given enterprise, service, or product.
Examples:
| Małpka | FRAPPE | HERBATKA PO GÓRALSKU | roweromat |
| 33. vodka | 30, 32: coffee; coffee based beverages | 30: tea | 39 : storage and rental of bicycles, scooters, mopeds, and e-scooters services |
| Z.262860 | Z.200707 | Z.271898 | Z.457100 |
4. Offensive or vulgar character
If a trademark is contrary to public policy or accepted principles of morality, it will not be registered.
Examples:
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Cocainka |  |
Pożar w burdelu |
| EUTM-005585898 | Z.325678 | EUTM-016176968 | Z.425061 |
5. Marks offending religious, patriotic, or national tradition sentiments
A trademark containing an element of high symbolic value, particularly of a religious, patriotic, or cultural character, whose use would offend religious sentiments, patriotic feelings, or national traditions, will not be registered.
Examples:
| BUDDHA |  |
||
| Z.403018 | Z.295156 |
6. Marks containing flags, coats of arms, or other legally protected symbols
The Patent Office will not register a trademark containing country’s coat of arms, colors, or national anthem. A trademark containing symbols (coat of arms, flag, emblem) of a foreign state, the name, abbreviation, or symbol of an international organization, or officially designated markings, inspection marks, or guarantee marks adopted in a foreign state will not be registered if such a prohibition results from international treaties, unless the applicant demonstrates authorization from the competent authority to use such a designation in trade.
Examples:
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| EUTM-13169313 | EUTM-5627245 | Z.276682 | EUTM-9273137 |
7. Indication of geographic origin
When a trademark is descriptive with respect to the geographic origin of goods or is inherently misleading, particularly regarding the character, quality, or geographic origin of the product, it may be refused.
Examples:
| KALWADOS PODLASKI
(Eng.: Calvados of Podlachia – a region in Poland) |
OPOLSKA SPÓŁDZIELCZA KASA OSZCZĘDNOŚCIOWO-KREDYTOWA
(Eng.: Opole Cooperative Savings and Credit Bank) |
||
| Z.397742 | Z.399243 |
Official trademark refusal procedure
Before issuing a final refusal decision due to non-compliance with absolute grounds for trademark registration, the IP office sets a deadline for the applicant – usually one month – to respond to the office’s objections and submit arguments in defense of the trademark application.
If the applicant fails to submit a response, the office will likely issue a decision refusing trademark registration. The office will also refuse registration if it finds the applicant’s arguments unsubstantiated.
To maximize the chances of obtaining trademark protection, it is advisable to entrust the preparation of the trademark defense to a professional—a trademark attorney.
The IP office’s decision to refuse trademark registration can be appealed.
Trademark registration refusal due to conflict with earlier marks
IMPORTANT NOTE: The Polish Patent Office and EUIPO will NOT refuse trademark registration on official grounds simply because an identical mark (or a confusingly similar mark) was previously registered.
Trademark owners themselves must monitor whether someone else is filing their mark or a confusingly similar mark. If someone files such a mark, trademark owners can file an opposition to the trademark application with the office.
Learn more about monitoring your trademark.
How to avoid the trademark registration refusal?
To prevent trademark registration refusal, consider taking the following steps:
- Avoid generic designations
Trademarks that are commonly used in a given sector may encounter registration difficulties. Strive to select unique combinations of letters, symbols, or graphics that stand out in your industry. - Ensure distinctive character
Confirm that your trademark has sufficient distinctive character to allow it to stand out among other marks. Avoid overly descriptive signs and focus on originality and uniqueness. - Consult a trademark attorney
Consult with an intellectual property attorney specialized in trademark law. A professional can help identify potential issues and provide valuable guidance regarding the registration process. - Conduct a detailed trademark search
Perform a comprehensive trademark search to ensure your mark is unique and has the potential for successful registration. Use the services of a patent law firm. - Prepare documentation carefully
Prepare your application documentation with precision and in accordance with your chosen IP office requirements. Avoid errors or inaccuracies in your application. A trademark attorney can assist you with this process.
Before filing your trademark with the patent office, it is advisable to seek the advice of an intellectual property attorney.
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