EUIPO’s Board of Appeal Grants Salvation to MONASTERY
Kliment Markov
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| From Kryštof Harant's travelogue (1608) |
In January 2024, Ellen and Reiko Inc., a U.S.-based cosmetics company (referred to below as the applicant), designated the European Union in its international registration No. 1795126 for the word mark MONASTERY. The mark covered a wide range of goods and services across Classes 3, 18, 21, 24, 35, and 44, including cosmetics, fragrances, bags, brushes, towels, retail services, and beauty and spa related services.
The EUIPO issued a provisional partial refusal under Articles 7(1)(b) (non-distinctiveness) and 7(1)(c) (descriptiveness) of Regulation (EU) 2017/1001 (EUTMR), asserting that the term “MONASTERY” was descriptive and lacked distinctive character for the covered goods and services, except for “cosmetic brushes; cosmetic spatulas; electric face cleansing brushes” in Class 21. The examiner argued that consumers would understand the mark as indicating that the goods and services in question were made or offered by or in a monastery, and further claimed that the term “MONASTERY” is commonly used in the marketing of such goods and services. In support, the examiner put forward screenshots from websites showing cosmetic products, bags, combs, and towels from monasteries and former monasteries that had been transformed into hotels or other establishments offering spa, personal care, and beauty services.
The trade mark applicant contested this view, arguing that the connection between the term and the contested goods and services would require multiple mental steps. It also pointed to prior registrations of similar marks and the brand’s established status in the cosmetics sector. The trade mark applicant further disputed the adequacy of the reasoning and evidence relied on by the examiner, noting that the cited screenshots did not establish that EU consumers would perceive “MONASTERY” as descriptive and non-distinctive of the goods and services concerned.
Despite these arguments, the examiner maintained the objections and further asserted that “the Office is not under any obligation to provide concrete examples of the use of ‘MONASTERY’ in relation to particular goods and services(08/12/2012, T-415/11, Nutriskin Protection Complex, EU:T:2012:589, § 31)”. Of particular note, the examiner stated:
[…] [E]ven if religious communities generally conduct a simple lifestyle, that would not necessarily prevent their members from using cosmetic products or complementary products such as hair brushes or towels. However, even if that were the case, this would not exclude that monasteries manufacture or sell the products or propose the services in question to customers to supplement their income. Furthermore, monasteries manufacturing cosmetic products may also seek external expertise, such as legal advisors specializing in cosmetics regulation, to ensure compliance with EU regulations [It seems that even monks and nuns cannot escape the long arm of EU cosmetic regulations].
Ellen and Reiko Inc. appealed the decision.
Board of Appeal Decision
On 20 August 2025, the Fourth Board of Appeal annulled the first-instance decision, finding that the term “MONASTERY” was neither descriptive under Article 7(1)(c) nor devoid of distinctive character under Article 7(1)(b) of the EUTMR with regard to the goods and services concerned.
The Board acknowledged that some monasteries might offer certain of the contested goods and services, but such practices are limited and not widely known among the relevant public within the EU. Consequently, the evidence cited by the examiner was deemed insufficient to establish a direct and immediate association between the term “MONASTERY” and the contested goods and services. Beyond the examiner’s materials, the Board also carried out a legal assessment of well-known facts. It recognised the historical role of monasteries in producing certain goods, such as food, drink, crafts or religious items, but refused to extend that common knowledge to cosmetics, spa and the wider range of contested goods and services, at least not without sufficient substantiation, which ultimately proved lacking.The Board also found no sufficient corroboration that the term “MONASTERY” is commonly used in connection with the marketing of the contested goods and services. It concluded that the mark is capable of functioning as an indicator of origin and does not fall under the absolute grounds for refusal.
As a result, the appeal was upheld and the contested decision was annulled.
Comment
This Kat won’t defer to compliance lawyers to ask about their monastic clients (attorney-client privilege is sacred, after all), and will instead stick to what is well known – or, almost apophatically, to what is not, as highlighted by the Board of Appeal, which appears to be the crux of the case.
The examiner attempted to corroborate its findings with evidence but ultimately asserted that the Office is not obliged to provide concrete examples. In doing so, it implies reliance on allegedly well-known facts, that is facts "which are likely to be known by anyone or which may be learnt from generally accessible sources [...] or which stem from the practical experience generally acquired from the marketing of general consumer goods, which facts are likely to be known by any person and are in particular known by consumers of those goods" as developed in the case law (Linex, T-444/12 and the case law cited). This is because the facts that need not be proven are the well-known (Bonbonverpackung, C-25/05 P), which is precisely where the examiner fell short.
Essentially, the broader implication of the MONASTERY case can be found not in its outcome, but rather in its quiet reminder of the obligation for adequate reasoning, and more specifically the objective standard behind what qualifies as well known. The established definition of well-known facts outlined above is arguably tautological, yet it remains the most judicious there is. Its open-ended nature, however, means it must be applied with extreme care to avoid circular reasoning that could sometimes contradict reality.