3. Pre-Filing Search & Risk Assessment

Because EUIPO does not examine relative grounds, pre-filing conflict detection is the applicant's responsibility. A rigorous search reduces the 20% opposition risk significantly.

The 4-Step EU Search Framework:

·  Step 1: eSearch plus — Search for exact and phonetic matches in the EUIPO database.

·  Step 2: TMview — Cross-check national registers (Germany, France, Spain, Italy, Netherlands, etc.) for conflicts not captured by EUIPO.

·  Step 3: Common-Law Sweep — Search Google, Amazon, social media, and domain records for unregistered use.

·  Step 4: TMclass Verification — Confirm that all goods/services terms are in the Harmonised Database. Non-TMclass terms disqualify the application from Fast-Track.

The Triple Similarity Test: EUIPO and the CJEU assess similarity across three dimensions: visual similarity (appearance), phonetic similarity (sound), and conceptual similarity (meaning). A mark may be found similar even if it differs in one dimension if the overall impression creates a likelihood of confusion.

4. Absolute Grounds Refusal (Article 7 EUTMR)

EUIPO examines only absolute grounds — it does not assess conflicts with prior marks. The five main categories of absolute refusal are:

·  Article 7(1)(a): Lack of distinctiveness — marks that are too simple, common, or generic to function as source identifiers.

·  Article 7(1)(b): Descriptiveness — marks that merely describe the characteristics of the goods/services (e.g., 'Fresh' for beverages).

·  Article 7(1)(c): Genericness / geographic names — terms that have become generic or that indicate geographic origin (e.g., 'Iceland' for food products).

·  Article 7(1)(f): Contrary to public policy or deceptive — marks that are offensive, racist, or misleading.

·  Article 7(1)(h): Official emblems — flags, coats of arms, and other protected symbols.

Overcoming Absolute Grounds: Applicants can demonstrate acquired distinctiveness through extensive use in the EU, amend the goods/services description to avoid descriptive overlap, or limit the mark's scope. The threshold for acquired distinctiveness is high — typically requiring significant market penetration and consumer recognition.

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