When acquired distinctiveness is not enough to establish inherent distinctiveness

[Marcel Pemsel]

When acquired distinctiveness is not enough to establish inherent distinctiveness

Marcel Pemsel Thursday, July 09, 2026 - acquired distinctiveness, General Court, inherent distinctiveness, Marcel Pemsel, T-615/25, trade marks, Veikkaus

Can a trade mark consisting of descriptive elements become inherently distinctive merely because one of its components has acquired distinctiveness through use? In a recent decision concerning the sign “FOR BETTER GAMING – VEIKKAUS”, the General Court had to answer this question (case T-615/25).

Background

In 2024, the Finnish company Veikkaus Oy filed an application for registration of EU trade mark “FOR BETTER GAMING – VEIKKAUS” (“VEIKKAUS” being Finnish for “betting” or “prediction betting”). It was inter alia filed for various gaming and gambling related services in classes 35, 41 and 42. Veikkaus argued as a primary claim inherent distinctiveness because the element “VEIKKAUS” had acquired distinctiveness in Finland. In the alternative, Veikkaus relied on acquired distinctiveness.

The examiner at the European Union Intellectual Property Office (“EUIPO”) rejected the application on the ground that it lacked distinctiveness. The EUIPO’s Board of Appeal (“BoA”) largely dismissed Veikkaus’ appeal. Veikkaus filed an action before the General Court.

The General Court’s decision

The judges dismissed the appeal.

The Court recalled that an EU trade mark application must be refused if an absolute ground for refusal obtains in part of the EU (Art. 7(2) EUTMR). In the present case, the BoA had found that the trade mark would not be perceived as a source indicator by the Finnish public.

Since the trade mark at issue can be perceived as an advertising slogan, the judges drew on consistent case law on this type of mark. Even though advertising slogans, indications of quality or incitements to purchase the goods or services covered by the mark convey by definition, to a greater or lesser extent, an objective message, even a simple one, it may nevertheless be capable of indicating the commercial origin. This can be true, e.g., where the mark has a number of meanings, constitutes a play on words or is perceived as fanciful, surprising and unexpected and, in that way, be easily remembered, so that it is not merely an ordinary advertising message, but possesses a certain originality or resonance, requires at least some interpretation by the relevant public or sets off a cognitive process in the minds of the public concerned.

The judges confirmed the BoA’s finding that the trade mark would be understood as “for better gambling – betting (or prediction betting)”. The hyphen and the combination of English and Finnish words were not deemed sufficient to confer the minimum level of distinctiveness on the mark. The meaning of the mark remains the same.  

 

The Court dismissed Veikkaus’ argument that the mark is inherently distinctive because the element “VEIKKAUS” has acquired distinctiveness in Finland. It held that the structure of Art. 7 EUTMR draws a clear distinction between the intrinsic characteristics of a sign in Art. 7(1) EUTMR and its characteristics acquired through use in Art. 7(3) EUTMR. Only Art. 7(3) EUTMR allows the actual use to be taken into account. It cannot have any effect on the inherent distinctive character of a sign. The judges considered this to be settled case law and that it must apply to situations where actual use is invoked only for a part of the trade mark. 

 

To support this conclusion, the Court cited the following cases:

• In Daimler v EUIPO (Représentation d’étoiles à trois branches sur fond noir I), the General Court held that the following pattern mark was inherently non-distinctive despite the fact that the Mercedes star as part of the pattern might enjoy a reputation as part of another mark (the Mercedes star in a circle):

• In Quality First v EUIPO (MORE-BIOTIC), the General Court confirmed the refusal of the trade mark “MORE-BIOTIC” despite the applicant’s argument that the brand “MORE” is increasingly known among the relevant public.

The judges found that, after the EUIPO’s analysis showed that the mark was non-distinctive and descriptive, the burden of proof rested on Veikkaus. It had to provide specific and substantiated information to show that the mark has intrinsic distinctive character. Such evidence needed to show that consumers did not need to become accustomed to the mark through the use made of it, and that it immediately enabled them to distinguish the goods or services from those of competing undertakings. Veikkaus failed to do so because all its arguments were based on the acquired distinctiveness of the element “VEIKKAUS”.

The judges also rejected Veikkaus’ argument that trade marks, which have acquired distinctiveness, must enjoy the same level of protection as inherently distinctive marks. This principle, the Court found, applied to the level of protection after registration and not to the assessment whether a trade mark enjoys inherent distinctiveness.

Likewise, Veikkaus’ alleged family of marks did not play a role. This is not a concept for absolute grounds.

For these reasons, the Court dismissed the appeal.

Comment

The decision raises the interesting question whether trade mark protection can be obtained for signs that consist of descriptive elements and one of them has acquired distinctiveness through use. The General Court denied inherent distinctiveness. If the decision becomes final, the EUIPO will have to decide on Veikkaus’ alternative claim for acquired distinctiveness. This will be challenging because Veikkaus will have to show that the entire sign “FOR BETTER GAMING – VEIKKAUS” has been used and is perceived as a source indicator by the relevant public. Evidence showing only use and acquired distinctiveness of “VEIKKAUS” alone is unlikely to be enough for this exercise.

The German Patent Court (“GPC”) holds a different view. According to German case law, a trade mark is protectable if one of its components is registrable. The GPC also applies this principle to elements that have acquired distinctiveness, provided that the element that has acquired distinctiveness will be perceived as “an individualising source indicator”. For instance, the GPC accepted the trade mark 

 

as inherently distinctive. Although the word elements and the triangle in the letter "O" were deemed descriptive, the colour had acquired distinctiveness as a source indicator. This conferred inherent distinctiveness on the entire sign (case no. 26 W (pat) 533/18). The Court of Justice of the EU (“CJEU”) could bring clarity on this point.

Speaking of the CJEU: The General Court’s statement that actual use may not be taken into account when assessing inherent distinctiveness might sound reasonable but ignores the CJEU’s decision in Deutsches Patent- und Markenamt (#darferdas?) (C-541/18, IPKat here). There, the CJEU found that the perception of the relevant public of a sign must be assessed taking into consideration all the relevant facts and circumstances. Cryptic as CJEU decisions can be at times, paras. 22 and 23 of that decision read as if the CJEU required the trade mark offices to consider the actual use made of the sign prior to registration in order to assess the distinctive character. This would be in line with the CJEU’s statement that all relevant facts and circumstances must be taken into account. Thus, the CJEU’s case law would not speak against considering the acquired distinctiveness of an element of a complex trade mark when assessing inherent distinctiveness.