ECTA Round table in Alicante: Whether your mark has to go

to the gym or simply shouldn´t be going to the registry at all

Last Thursday we had an excellent gathering in the city that hosts the EUIPO: Alicante. ECTA organized, as it does every year, an interesting round table to discuss topics in a friendly petit comité atmosphere. This time, we met at the ICALI premises. 

The topic was weak marks. Interesting discussions were held throughout the session, with interventions from the public that felt more like a talk between friends. But a really special point was raised: the inherent instability of weak trademarks. 

A ton of case law was exposed with the inevitable conclusion: THERE IS NO CONCLUSION. There is no straight line to follow or exhaustive criteria to determine the precise ‘degree of weakness’. Case law varies significantly for weak trademark assessment, specifically within the EU office, analysing why in some cases not only the first instance but the Boards of Appeal considers there could be a LoC or not. 

The standard for the English language was discussed, as was the question of how to determine whether a word is ‘basic English’ or not. Is the dictionary approach truly objective? Is a word considered basic enough just because it is included in an A1-level dictionary? Is that a “well-known fact”? 

The current logic seems to be: if a term is a cognate (similar across multiple languages), it is considered basic. For example, CYCLIC/CICLIC is easily linked to CÍCLICO/CYCLICAL, making it basic. However, taking Case T-288/23 (Healthily (fig.) / Healthies (fig.)) regarding the word “health,” it was determined it was not basic English. This raises the question: is “health” truly not a word a consumer would encounter in basic English? What is the right point to determine whether a mark is distinctive enough?  

Well, we all know that English is the “problematic” language for assessing the level of understanding an EU consumer will have and whether a term should be considered descriptive or laudatory. But other than this perspective… what does the future hold for weak marks? 

Some of the solutions implied was the re-inclusion of disclaimers, but such implementation remains erratic. In many EU countries (Spain included) where the disclaimer still exists, it is completely optional. If the disclaimer is implemented, how will it evolve—not only in case law but in the formal requirements assessment itself—to provide efficiency?  

For instance, if a mark in Class 43 cannot use the word “restaurant” as an enforceable part of its mark, how should those parts be weighted when LoC is assessed to determine similarities among signs? What if that word is also part of the figurative elements included? Will there be a formal requirement if the word is not included in the disclaimer?  

Another solution proposed by  EUofficials was to opt for cancellation actions based on absolute grounds against those trademarks that are weak and are trying to impose a monopoly over a sign that should not be a mark itself due to a lack of distinctive character. But in this regard – let aside the time and cost investment-, the question arises: would the Office be able to interpret the wording of the Regulation—words like “any” or “exclusively”—as “could be” or “comprised of” to annul those marks that are not strong enough?  

The Regulation implies that having the minimum threshold of distinctiveness makes you eligible to register. However, the enforceability of that mark is often not aligned with the fact of its registration. We could open a full debate on whether marks are registered only to obtain a monopoly of use, but it is imperative to recognize that this is usually the main objective. Should the onus be on the examiners to reject such registrations, or is it the responsibility of the cancellation division to invalidate them? Or is it the BoA’s role to implement a more rigorous evaluation process when a case comes before them? Is it the practitioner’s task to deter a client’s initiative through a pre-assessment based on their own judgment, rather than having clear lines drawn by the authorities who hold the power over what is registrable? 

An interesting additional debate was raised: if the assessment is often ruled by actual market conditions, why are other market-driven perspectives not taken into account? For instance, should we consider if a sign—weak or not—is being intentionally copied by a competitor seeking an unfair advantage? Is LoC really the only tool in our shed?

March 04, 2026