Although the law provides that any sign, including words, names of persons, letters, numbers, designs, colors, shapes or sounds, can constitute a trademark, this possibility is not unlimited. In order to benefit from protection, the sign must be capable of distinguishing the goods or services of one undertaking from those of other undertakings and be capable of being represented in the register in a clear and precise manner.
At the examination stage, however, OSIM verifies more than the fulfilment of these general conditions. Each sign must pass through a real legality filter, which means that there must be no absolute reason for refusal among those provided by law.
Thus, even an available sign which does not conflict with an earlier trade mark may be rejected if it lacks distinctive character, contrary to public policy or morality, or if it includes certain protected names, symbols or emblems. Below, we look at five of the most relevant reasons why OSIM may refuse to register a trademark.
- Trademarks which are devoid of distinctive character
In order to be registered as a trade mark, a sign must help consumers to recognise the goods or services of a particular undertaking and to differentiate them from those of competitors. If the public perceives the sign only as an ordinary expression, information or description, it does not fulfil its function as a trade mark.
For example, the application for registration of the EU trade mark ’24 HOURS CHALLENGE’ No 018673265 was refused because the English-speaking public understood the expression only as a challenge lasting 24 hours, not as the name of a particular brand. The lack of distinctive character was found in Cyprus, Denmark, Finland, Ireland, Malta, Sweden and the Netherlands. However, since the EU trade mark is unitary, the application was rejected for the entire territory of the European Union.
- Trademarks containing, without the consent of the owner, the image or patronymic name of a person who enjoys a reputation in Romania
The use, without consent, of the name or image of a person who enjoys a reputation in Romania may lead to the refusal of trademark registration.
For example, a name such as “BREAD EMINESCA” could be refused, because it obviously refers to the name of the poet Mihai Eminescu and could lead consumers to associate products with his memory or work.
By protecting such names, the law prevents the unauthorized exploitation of the reputation of public interest figures and avoids the commercialization of national cultural values in the form of insignificant grammatical changes.
- Trademarks containing signs of high symbolic value, in particular a religious symbol
The law prohibits the registration as a trademark of signs that have a high symbolic value, especially religious symbols, in order to avoid their exclusive use for commercial purposes.
The symbol “Chi-Rho monogram”, one of the oldest symbols of Christianity, consisting of the superimposition of the Greek letters “Chi” and “Rho”, the first letters of the word “Christ”. Given its strong religious significance, its inclusion in a trademark application can lead to a refusal of registration.
- Trademarks which are contrary to public policy or morality
The application for registration of the word mark ‘PABLO ESCOBAR’, filed by Escobar Inc., was refused by EUIPO and the decision was confirmed by the Board of Appeal in 2024.
Although the applicant stated that it was intended to prevent the unauthorised use of Pablo Escobar’s name and image, EUIPO considered that the sign was contrary to public policy and accepted moral principles. The name is directly associated with organised crime, drug trafficking and serious acts of violence, and its registration as a trade mark would have been incompatible with the fundamental values on which the European Union is founded.
The fact that Pablo Escobar continues to be present in films, series, books or commercial products was not considered sufficient to remove this reason for refusal. Nor did the applicant’s stated interest in limiting the unauthorised use of the name change EUIPO’s analysis.
- Trademarks containing, without the authorization of the competent bodies, reproductions or imitations of coats of arms, flags, state emblems, insignia, official control and guarantee seals, coats of arms, belonging to the countries of the European Union and falling under the scope of Article 6 ter of the Paris Convention.
In the case of EU trade mark application no. 019172018, the sign “BIOTHERAPEUTIC NATURAL MEDICINE” was refused because it included elements that imitated the white cross on a red background and the shield associated with Switzerland.
Although the applicant attempted a slight stylization, subtly altering the shade of red and the shape of the shield, the office rejected the request. It was established that the changes were minor, being an obvious heraldic imitation. The law prohibits such practices because the public may mistakenly believe that the products in question have an official link to the state or are approved by its authorities.
Taken as a whole, the process of registering a trademark involves more than filing an application with OSIM. The sign chosen must meet the requirements laid down by law and must not fall under any of the absolute grounds for refusal.
Choosing a sufficiently distinctive brand is essential both to achieve protection and to build an identity that is easily recognizable by consumers. At the same time, checking the availability of the trademark in the relevant databases can reduce the risk of opposition or disputes with holders of earlier rights.
An analysis carried out before filing makes it possible to identify these risks and increases the chances that the trademark will be registered and used safely in the long term.
However, compliance with the legal conditions does not mean that the trademark must be a conventional one. On the contrary, a creative and unusual sign can be both distinctive and effective from the point of view of legal protection. You can read about the less common shapes that a brand can wear in our article “Beyond the classic: the evolution towards unusual brands”.
If you want to find out if the chosen trademark meets the legal conditions for registration and if there is a risk that it will be refused by OSIM, the TAS Agency team can provide you with advice and assistance both at the preliminary analysis stage and throughout the registration procedure.
📧 E-mail: office@agentiatas.ro
📞 Phone: 0745 160 163
