Acquired distinctiveness of an EU trade mark is the route to saving an application where a sign is considered descriptive or too generic in itself. EUIPO may refuse registration under Article 7(1)(b) and (c) of Regulation (EU) 2017/1001, but an applicant may demonstrate that the sign has nonetheless acquired distinctive character through genuine use (Article 7(3)). The key question here is not "whether it can be proved" but precisely which territory of the EU must show that change in consumer perception.
The Unitary Character of the Mark and Why It Complicates the Evidential Task
An EU trade mark "stands or falls" as a single right: a refusal or invalidity based on a lack of distinctive character in even part of the Union affects the registration as a whole. The practical consequence is that evidence of acquisition must cover the entire territory where the initial obstacle exists — not merely the major markets.
Where a sign is initially non-distinctive, the applicant must show that a significant proportion of the relevant audience in the EU has come to perceive the sign as an indicator of the commercial origin of the goods or services, rather than as a description of their characteristics.
One temporal boundary is worth fixing clearly: at the examination stage, the relevant date is the filing date — consumer perception is assessed as at that moment. In invalidity proceedings against an already registered mark, case law (including Decathlon, T-349/19) allows consideration of the period between registration and the filing of the invalidity application. But for an applicant preparing a filing, there is one reference point: the evidence must confirm the position as at the date of filing, not as at the date of any subsequent dispute.
What EUIPO and the Courts Actually Require on Territory
The joined cases Nestlé v Mondelez concerning the shape of the KitKat chocolate bar (C-84/17 P, C-85/17 P, C-95/17 P) settled a long-running debate: the Court of Justice of the EU confirmed that acquired distinctiveness must be proved across the entire territory of the Union where the sign lacked inherent distinctive character — not merely in a "substantial part" or a majority of markets.
At the same time, the Court expressly acknowledged that this does not mean a separate evidential package must be submitted for each member state individually. Evidence may be presented in aggregate — across the Union as a whole, for individual countries, or for groups of member states — provided it is capable of persuasively demonstrating acquired distinctiveness also for those countries for which no separate package has been provided. This possibility of extrapolation builds on the earlier position of the Court in Lindt Goldhase (C-98/11 P, 2012), where it was already noted that requiring evidence for each individual member state would be unreasonable.
The linguistic factor substantially changes the scope of the problematic territory. Where a refusal is based on the descriptiveness of an English-language word, virtually the entire EU territory is considered problematic — established EUIPO practice proceeds on the basis that English is understood by the average consumer across the vast majority of member states, not only in English-speaking countries. An evidential strategy for such a sign therefore cannot be narrowed to Ireland and Malta; it must cover the Union considerably more broadly.
In practice this means: a reputation in only two or three of the largest EU countries is generally insufficient where the public in the remaining territory has yet to associate the sign with a specific undertaking.
See also: for common applicant errors at the filing stage, see our article on the top 5 strategic mistakes in EU Trade Mark Registration: Top 5 Strategic Mistakes.
What Evidence EUIPO Actually Assesses
Office and court practice recognises several categories of evidence as suitable for demonstrating acquired distinctiveness.
Consumer surveys in the relevant member states or regions are effective where the methodology, sample, and representativeness withstand scrutiny. Sales data and market share by country or region demonstrate the scale and geography of genuine use. Marketing materials and budgets — invoices, media plans, the geographical distribution of campaigns — confirm the scale of investment in brand recognition. Media coverage, awards, and public materials further support the picture of recognition. Continuity of use up to the filing date, and its proximity in time to that date, carry no less weight than the fact of historic use in itself.
In our experience, the weakest point in preparing such a package is precisely the causal link: applicants accumulate evidence of market presence but do not show directly how that use actually changed public perception — from "a description of the goods" to "an indicator of a specific commercial source."
Geography of Evidence: How to Cover the Territory Without Gaps
The strategic approach is to gather evidence by groups of countries that together cover the entire territory where distinctive character is lacking. Markets may be grouped by linguistic or cultural proximity — Germany and Austria, France together with Belgium and Luxembourg, Spain with Portugal — but it is important that no uncovered zones remain after the grouping.
A typical mistake is to rely solely on the "big four" countries (Germany, France, Italy, Spain): this is sufficient where those markets genuinely cover all the problematic territory, but it is risky where evidence for the rest of the EU is weak or entirely absent. The second common problem is an incomplete evidential history: a one-off advertising campaign from a year ago does not equal stable, long-term use — and EUIPO makes precisely that distinction.
A Practical Action Plan for Acquired Distinctiveness
Preparation should be structured sequentially rather than assembled haphazardly after a preliminary refusal has already been received.
First — a distinctiveness audit: assessing whether the sign genuinely carries a risk of refusal under Article 7(1)(b) and (c), and if so, planning the evidential strategy in advance of filing rather than after the fact. Next — a geographic matrix: a map of the EU with priority market clusters that together cover the entire territory required. The third step — assembling a coherent evidential package (surveys, sales figures, media, budgets) linked to a specific country or linguistic cluster and to the period before the filing date. The final step — structuring the submission itself so that the EUIPO examiner can readily identify the territorial coverage, continuity of use, and impact on consumer perception.
Questions Applicants Frequently Ask
Can evidence of use be added after receiving a refusal from EUIPO? Yes — this is possible at the stage of responding to the preliminary examination opinion or during a subsequent appeal. However, it is important to understand that additional evidence strengthens the position only where it confirms the state of consumer perception as at the filing date — it does not replace an initially weak evidential base with new facts about the current situation.
How much does preparing an acquired distinctiveness evidence package cost? The cost depends on the number of problematic markets, the scope of surveys required, and the depth of sales and marketing data analysis — this is an individual calculation that differs significantly from the fixed official EUIPO fees covered in our article on the cost of EU Trade Mark Registration Costs.
Conclusion
An EU trade mark for signs with initially low distinctive character requires territorially complete evidence of acquisition — covering at least the entire territory where that character is absent. Extrapolation between closely related markets is permissible, but limiting the evidence to a few of the largest countries is a risky strategy that the Court of Justice of the EU has already rejected in the KitKat case. A well-designed evidential collection across EU clusters substantially improves the prospects of successfully registering a sign that would otherwise be considered too descriptive or generic.
If your sign falls within the risk zone under Article 7(1)(b) and (c), it makes sense to carry out a distinctiveness audit before filing rather than after a refusal. Submit a request at eutm.com.ua and we will assess the risks and plan the evidential package for your specific case.
