ArticleAbsolute and relative grounds for refusal

Every trademark office splits the reasons for refusing an application into two groups. Absolute grounds are about the sign itself and protect the public interest. Relative grounds are about earlier rights and protect other businesses. Knowing which one you are up against tells you what to do next, because the fixes are not the same.

Absolute grounds: the sign itself

A sign fails on absolute grounds when it is not capable of working as a trademark at all. The main cases are marks with no distinctive character, marks that simply describe the goods or services, and terms that have become the ordinary name for a product. Signs that mislead the public, offend accepted principles of morality, or reproduce flags, official emblems and protected geographical indications are refused for the same reason. In EU law these sit in Article 7 of the EU trade mark regulation.

One language is enough

For an EU trademark, a ground for refusal only has to apply in part of the Union. A word that is meaningless in English but plainly descriptive in Swedish, German or Spanish will be refused for the whole EU. This catches applicants out regularly, because the mark looks perfectly distinctive in the language they were thinking in.

Relative grounds: someone was there first

Relative grounds concern conflicts with earlier trademarks and other earlier rights. The question is whether consumers would be likely to confuse your mark with one that already exists for similar goods or services. This is a comparison between two private interests rather than a defect in your sign.

Who checks what, and when

This is the part most applicants get wrong. Absolute grounds are always examined by the office itself, without anyone having to complain. If the examiner finds a problem with the name, the application is refused there and then. Relative grounds are not handled the same way everywhere. For an EU trademark the office will not refuse you over an earlier mark. It publishes your application instead, and the owner of the earlier mark has three months to file an opposition. If nobody objects within that window you can register even though a similar mark exists. Several national systems, the Swedish one among them, work the other way and check earlier rights during examination, so an application can be stopped there without any third party getting involved.

Examples that fail on absolute grounds

“Best Luxury Watches” for watches is both laudatory and descriptive, so it tells consumers about the product rather than identifying who made it. “Bread” for bakery goods is the ordinary name for the product. “Champagne” for sparkling wine made outside the Champagne region hits a protected geographical indication and misleads about origin. Marks built around the Red Cross emblem or the Olympic rings are refused as protected signs.

How to fix it

An absolute grounds objection is rarely solved by narrowing your classes, which is the standard remedy for a conflict. If the mark is wholly descriptive you generally need a different name, or a distinctive element added to it. Where only part of your goods and services is affected, removing those items can be enough. Proving that the public already recognises the mark as yours through long and intensive use is possible, but the evidential bar is high and it is not a realistic route for a new brand.

Why it matters commercially

Official fees are not refunded if your application is refused. An absolute grounds problem is therefore worth catching before you file rather than several months and a few hundred euro later, which is why it pays to test a candidate name against both tracks while it is still easy to change.