Does neologism give rise to distinctive character?

The European Union Intellectual Property Office (EUIPO) had to deal with the sign "Endlagerforschungszentrum" registered as a trade mark. However, the trade mark registration was refused, although it is a neologism. Rightly so?

The Society for Plant and Reactor Safety (GRS) gGmbH applied for the European trade mark "Endlagerforschungszentrum" for services in the field of research, atomic energy and the search for suitable final disposal facilities. The application was refused. The trade mark applicant filed an appeal, so that the Board of Appeal of EUIPO had to deal with the matter.

The trade mark applicant argued that the trade mark possessed the required distinctive character. This, it was claimed, followed from the fact that the term "Endlagerforschungszentrum" would represent a linguistically unusual neologism. The term was not listed in any dictionary. It was a term that had been created by the trade mark applicant more than 25 years ago and was used exclusively by her.

Neologism and distinctive character – the decision of the Office

The Board of Appeal of EUIPO (Decision of 10.10.2022 – R 769/2022-1) confirms the refusal of the application.

The Office first notes that the sign is composed of several terms from the German language. In the German language, new words can be formed by combining two or more nouns. The neologism is therefore formed according to the rules of German grammar. The individual words of the neologism are known to both consumers and those working in the field.

The overall concept is therefore no more than the sum of its constituent parts. It is about a research centre that deals with final disposal facilities.

The Office can therefore not identify a linguistically unusual neologism. The fact that the word is not found in dictionaries does not preclude this. On the one hand, dictionaries do not claim to be complete. On the other hand, linguistic unusualness presupposes that a term is formed contrary to the rules of grammar or that its meaning deviates from the mere sum of its constituent parts.

The process of word creation is not relevant for the assessment of distinctive character. A trade mark does not originate from a creation. It is also not based on an element of originality or imagination. Solely its suitability to distinguish the registered goods or services on the market from similar goods or services of other suppliers is relevant.

Since all registered services relate to research services, which in some cases explicitly concern final disposal facilities, the sign does not possess distinctive character.

Conclusion

For the registration of a trade mark, a sufficient distinctive character of the sign is required. This can follow from the fact that it is a neologism. Linguistically creative neologisms that go beyond the meaning of the individual constituent parts and are linguistically and grammatically correct can be distinctive. By contrast, grammatically correctly formed terms that have a descriptive meaning in relation to the registered goods and/or services are not suitable to fulfil the origin function of a trade mark.