One Trademark application is often the first step in legally securing your own company or product and establishing yourself on the market. However, not every application automatically leads to registration of the trademark in the trademark register. Applicants often encounter so-called absolute grounds for refusal. These obstacles can lead to a trademark application being rejected by the German Patent and Trademark Office (DPMA), the European Patent and Trademark Office (EUIPO) or other competent authorities.

In this article, we would like to explain what absolute grounds for refusal are, why they exist and how you can increase your chances of a successful trademark application. We will also look at typical stumbling blocks and provide practical tips on how to avoid refusals.

Overview

• Absolute grounds for refusal prevent the registration of a trademark due to deficiencies in its protectability.
• Distinctive character is essential: brands that are too descriptive or general are rejected.
• Misleading information or illegal contents are frequent reasons for rejection.
• Careful preparation and legal advice minimize the risk of rejection considerably.

What are absolute grounds for refusal?

Absolute grounds for refusal are legally defined reasons that prevent a trademark from being entered in the register. Unlike relative grounds for refusal, which relate to conflicts with earlier trademark rights, absolute grounds for refusal examine the trademark independently of existing registrations. This examination ensures that trademarks remain free for competition and do not mislead consumers.

Typical absolute grounds for refusal

Absolute grounds for refusal are key hurdles in the trademark application process. They serve to protect the public interest and ensure that trademarks meet the legal requirements. In the following, we look at the most common reasons why trademark applications are refused:

1. Lack of distinctiveness

A trademark must be capable of distinguishing the goods or services of one company from those of other companies. If a trade mark is too general or merely uses everyday terms, it lacks the necessary distinctive character. An example would be the registration of the term "table" for furniture - the term describes the product, but does not distinguish it from other furniture. Trade marks such as "IKEA" or "Habitat", on the other hand, create a clear association with a specific company due to their fanciful character.

2. Descriptive information

Signs that directly describe what constitutes the product or service cannot be monopolized. The protection of such terms would disproportionately restrict competitors. Examples include "Wein aus Italien" for wines or "Frisch und knackig" for salads. Trademark law stipulates that descriptive terms must remain available for general use.

3. Signs of common usage

Trade marks that consist exclusively of words that are used in common parlance for the goods or services claimed cannot be registered. Example: The term "apple" could not be protected for fruit. The purpose of this rule is not to restrict the use of common terms.

4. Misleading potential

Trademarks that could mislead the public are excluded from registration. This applies in particular to signs that create false expectations with regard to the origin, quality or characteristics of the goods or services. An example would be a trademark such as "Bavarian honey", which is used for honey that actually comes from another country.

5. Violation of public order or morality

Signs with offensive, discriminatory or otherwise objectionable content may not be protected. Examples would be trademarks with racist, violent or sexist content. Religious symbols or terms that are likely to offend the religious feelings of a group also fall under this ground for refusal.

6. Official markings and symbols

Trademarks that contain national coats of arms, flags or other protected official symbols may not be registered. This also includes international symbols such as the red cross or the Olympic emblem. These symbols are protected by law and may not be used for commercial purposes.

7. Shapes or other features with a technical function

Trademarks can also be refused if they consist exclusively of a shape or another feature that is determined by the technical function of the product. An example would be the typical brick shape of a LEGO brick. Such features should not be monopolized by trademark rights in order not to restrict competition unnecessarily.

8. Suspicion of deception with geographical indications

Geographical indications may not be used in a way that misleads consumers. A trademark such as "Parisian fashion" for clothing that is not manufactured in Paris could therefore be refused. Geographical indications enjoy special protection in order to protect consumers from false expectations.