EU trademark registration: what happens if distinctiveness is lacking?
When applying for registration of a European Union trademark, it is important to keep in mind that the EUIPO may refuse the application if the chosen sign lacks inherent distinctiveness. In some cases, this obstacle can be overcome by proving that the mark has acquired distinctiveness through use. However, if this approach also fails, there is still another possible solution. This article examines that alternative, taking as an example the real case of “County of Milan.”
Index:
- The acquired distinctiveness through use
- The “County of Milan” case: a significant example
- The conversion of the EU trademark into national applications
- Conclusion: why applying for an EU trademark is still worthwhile
The acquired distinctiveness through use
Under the EU trademark system, a sign that initially lacks distinctiveness may still be registered if it has acquired such character over time through continuous, extensive, and long-standing use (Article 7.3 of the European Union Trademark Regulation). For EU-wide registration purposes, however, it is necessary to prove that the use extends to a substantial part of the Union’s territory, if not to its entirety.
The “County of Milan” case: a significant example
A concrete case that clearly illustrates this situation is the application for the EU trademark “County of Milan”, filed for Class 25 (clothing and accessories).
The EUIPO initially rejected the application considering the name “County of Milan” as lacking of distinctive character, since the average consumer—especially an English-speaking one—would perceive it merely as a geographical reference to the city of Milan, renowned for fashion.
The applicant attempted to prove acquired distinctiveness by submitting evidences such as company documents, press coverage, participation in fashion events, articles in magazines, social media presence, and financial data. Nevertheless, the EUIPO found this evidence insufficient, as it failed to demonstrate that a significant portion of the European public perceived the sign as a trademark rather than a descriptive term.
The conversion of the EU trademark into national applications
Despite the EUIPO’s refusal, the applicant did not lose every possibility of protection. Indeed, Article 139 of the Regulation allows for the conversion of a rejected EU trademark application into a series of national applications in all countries where the grounds for refusal do not apply. This option can be requested only after the EU application has been refused and allows the applicant to retain the original EU filing date. Therefore, even if the EU registration is denied, the applicant can still secure protection in key markets without losing filing priority.
Conclusion: why applying for an EU trademark is still worthwhile
The “County of Milan” example shows that even when a European trademark is rejected, value can still be recovered through conversion into national applications.
An EU trademark offers protection across all Member States with a single application. If refused, it remains possible to “save” the registration by converting it into national trademarks while maintaining the original filing date. Therefore, for businesses exporting goods to at least one EU country, applying for an EU trademark is almost always worthwhile.
Finally, when choosing a trademark, it is advisable to opt for a sign that possesses originality and to consult a professional trademark attorney to avoid potential issues related to lack of distinctiveness or registrability.