EU trade marks and designs

Introduction

EU trade marks are valid throughout the territory of the EU. Individuals can apply to register their trade marks for specific goods and services with the EU Intellectual Property Office, known as EUIPO. EUIPO then issues a decision as to whether a trade mark can be registered. EUIPO has its own internal appeal procedure with Boards of Appeal that hear challenges to these initial decisions. The General Court hears appeals against EUIPO Board of Appeal decisions.

Trade marks allow consumers to easily identify the origin of the product or service. Seeing a known logo, symbol or name on a product tells you that it comes from a certain company. For this to work, trade marks must be distinctive. This means that they must be able to distinguish the goods and services of one company from those of another. They cannot be too generic or simply describe the product or service and there should be no risk of confusion between trade marks. Many of the trade mark cases heard by the General Court involve these issues.

It is also not allowed to register EU trade marks speculatively. Registration must be made in good faith and the trade mark must be genuinely used. If a trade mark remains unused, it cannot be relied on to prevent someone else registering a similar trade mark. These issues have also regularly been brought up at the General Court.

Trade marks can also not be registered if they are contrary to public policy or morality.

Sometimes it is also possible to register trade marks for the shape of a product, or for a sound.

Similarly designs can also be protected by intellectual property rights. These issues have also been the subject of General Court rulings.

Inherent lack of distinctiveness

Sometimes the signs for which a trade mark is requested have an inherent lack of distinctiveness. This can be the case if it is composed of simple geometric shapes, or is very generic.

For example, in 2024 the General Court confirmed EUIPO’s decision that Chiquita Brands could not register a simple blue and yellow oval as an EU trade mark for fresh fruit.

The sign, essentially the background of Chiquita’s logo with no text, was considered to be a simple geometric figure with no distinctive character (T-426/23 Chiquita Brands).

Descriptive signs

In 2017, a German pharmaceutical company, Stada Arzneimittel, applied to register “ViruProtect” as an EU trade mark for pharmaceutical and medicinal products. The General Court agreed with EUIPO’s decision that the relevant public – meaning the people most likely to encounter a trade mark and the products it represented – would interpret the trade mark as meaning “protection against viruses”. This rendered the trade mark too descriptive of the products for which registration was sought, and so it could not be registered (T-487/18 Viruprotect).

The General Court has also found that the names of two principalities were purely descriptive of the origin or destination of the products or services. In decisions in 2015 and 2022, the General Court stated that “MONACO” and a figurative mark consisting of the word “Andorra” were both purely descriptive. They could not therefore be registered as EU trade marks (T-197/13 MEM v OHIM and T-806/19 Govern d’Andorra).

Likelihood of confusion

In 2011, Argentine football player Lionel Messi applied to register “MESSI” as an EU trade mark for sports-related products. EUIPO rejected the application, arguing that the trade mark could be confused with the existing trade mark, “MASSI”, which was registered for similar products. However, in 2018, the General Court annulled that decision, ruling that Messi was too well known for any confusion to arise between the two trade marks. The Court of Justice upheld this on appeal. The Court confirmed that an applicant’s reputation is relevant when assessing public perception and the likelihood of confusion with another trade mark. In this case, Messi’s fame as a globally-recognised footballer was seen as a well-known fact. As a result, he could register his name as an EU trade mark (T-554/14 MESSI and C-474/18 P Messi Cuccittini).

In 2012, the General Court agreed with EUIPO that “VIAGUARA” could not be registered as an EU trade mark for drinks. This was because of the existing trade mark VIAGRA. While recognising that drinks and medicines are different goods, the Court took the view that VIAGUARA could take unfair advantage of the reputation of the trade mark VIAGRA. A consumer could be led to believe that the drinks would have similar qualities to the medicine product (in particular an increase in libido) (T-332/10 Viaguara).

Genuine use and good faith

An EU trade mark must be “used genuinely”. This means that it must be actively used in commerce and not just registered to prevent others from using it.

Irish fast-food chain Supermac’s and American fast-food chain McDonald’s have been involved in a dispute over the EU trade mark “Big Mac”, which has been registered for McDonald’s since 1996. In 2017, Supermac’s asked for this trade mark to be revoked in relation to certain goods. The Court found that McDonald’s had not “genuinely” used the “Big Mac” trade mark for poultry products, such as chicken sandwiches, continuously for a five-year period. Consequently, McDonald’s lost the EU trade mark for those products (T-58/23 BIG MAC).

An EU trade mark must also be registered in good faith, meaning with honest and fair intentions. In 2013, the trade mark “NEYMAR” was successfully registered with EUIPO. However, the applicant, Mr Moreira, had no connection to the famous Brazilian footballer, Neymar da Silva Santos Júnior. Later, at Neymar’s request, EUIPO declared the trade mark invalid. The General Court upheld this decision, concluding that Mr Moreira had acted in bad faith when he applied to register that trade mark. Mr Moreira’s arguments – that he was unaware of Neymar’s fame at the time of applying for registration, and that his choice of the name “NEYMAR” was a “mere coincidence” – were dismissed by the Court as implausible (T-795/17 NEYMAR).

Public policy and morality

In 2019 the General Court found that EUIPO had been correct to refuse an application for a trade mark with the words “Cannabis Store Amsterdam” on a background depicting marijuana leaves. The sign clearly drew the attention of customers to cannabis, a drug which is illegal in many EU countries. This was enough for the trade mark be rejected as contrary to public policy (T-683/18 Sante Conte).

In 2024 the General Court agreed with EUIPO that “Pablo Escobar” could not be registered as an EU trade mark. The Court found that EUIPO was right to focus on the perception of the Spanish public, given the links between Spain and Colombia. In its view, reasonable Spaniards, with average sensitivity and tolerance thresholds, would associate the name with drug trafficking, narco-terrorism and crimes. This was despite the fact that Mr Escobar was never criminally convicted (T-255/23 Pablo Escobar).

Shapes and sounds

EU trade marks are not limited to words, signs or logos. Shapes and sounds can also be protected.

In 1999, EUIPO granted a three-dimensional EU trade mark for the shape of the Rubik’s Cube to Rubik’s Brand. Seven years later, a German toy maker asked to cancel that trade mark, arguing that it protected a technical solution (the cube’s rotating mechanism) that should instead be covered by a patent. Following rulings from the General Court and the Court of Justice, EUIPO cancelled the registration of the EU trade mark in 2017. This decision was challenged by Rubik’s Brand, but the General Court upheld it, ruling that EU trade mark law prohibits registering shapes that are essential for achieving a technical result. In the case of the Rubik’s Cube, the General Court said, the cube’s overall shape and black grid lines were essential for it to function (T-601/17 Rubik's Brand).

In 2018, Ardagh Metal Beverage Holdings applied to register a sound mark as an EU trade mark with EUIPO for various drinks and metal drinks containers. The sound consisted of the opening of a drinks can followed by a fizzing noise. EUIPO rejected this application, claiming that the sound mark was not distinctive. In its first ever ruling on the registration of a sound mark submitted in audio format, the General Court confirmed that the sound mark could not be registered. It said that the sound was more functional or technical, as it simply resembled typical noises related to drinks. It could , therefore, not be identified as a specific brand (T-668/19 Ardagh Metal Beverage Holdings).

Designs

Designs can also be protected as a specific form of intellectual property right. Like the EU trade mark, these are also managed by EUIPO.

Lego’s toy brick design has been protected in the EU since 2010. Following a challenge by a German company, Delta Sport Handelskontor, EUIPO confirmed in 2022 that the toy brick was still protected under a special exception in EU law for modular systems, meaning a set of parts that fit together in different ways to create various things. The General Court upheld this decision. It recognised that Delta Sport Handelskontor could not prove that Lego’s brick design was not novel or unique enough to qualify for that exception. The Court also ruled that a design could only be invalid if all its features lost protection, while Delta Sport Handelskontor’s arguments covered only one feature (T-537/22 Lego).

Conclusion

Together, these judgments demonstrate the General Court’s key role in interpreting EU trade mark and design law, establishing important precedents that balance the protection of intellectual property and the promotion of healthy competition in the interests of consumers and businesses alike.