In the opposition registration system the registrar (e.g. the Patent Office of the Republic of Poland or EUIPO) examines only absolute grounds of refusal. It is non-distinctiveness or descriptiveness of a designation that most often constitute an obstacle to its registration. After determining that they occur in the matter an expert informs the applicant, giving him an opportunity to present his opinion, which in fact means a possibility to persuade the expert to change his preliminary opinion on the existence of absolute grounds of refusal.

The applicant’s arguments obviously depends on the applied mark itself and the expert’s allegation against it. However, in addition to it, a frequent element of the applicant’s argumentation is to refer to earlier decisions and practice of a given office, related to other trademarks which were earlier registered in various territories despite having an identical or very similar character, or in fact being identical with the applied trademark that the expert now considers to be non-distinctive.

The criteria for assessment of newly submitted trademarks have become more severe within the last years, especially with regard to word trademarks. Therefore, applicants often refer to earlier decisions in which registration offices  were much less severe in their assessment of the absolute grounds of refusal. The applicants usually refer to the principle of a so-called sound administration or a rule that administrative proceedings should deepen the citizen’s trust in the public administration bodies (art. 8 of the Polish Code of Administrative Proceedings).

It is not difficult to find in the databases of registration offices registered trademarks similar or identical with trademarks which are now consider to be void of distinctive character.  With regard to the EU trademarks applicants usually indicate registration of identical signs in particular Member States indicating that since the national registration offices following analogous criteria of assessment did not find the obstacles to registration, EUIPO should not have them, either.

Are the above arguments persuasive? Every practitioner knows that they are usually not. First, a registration office usually claims that the grounds of refusal are subject only to the relevant acts of law and not earlier decisions of the offices, therefore indicating earlier registrations has no influence on the examination of a newly applied trademark. Secondly, the offices argue that even if the office had made a mistake in the past by registering the indicated trademarks, the current applicant cannot benefit from this fact now.

Amongst many decisions that follow the above-mentioned reasoning several can be found, which can be assumed a starting point to convince the office to take into account arguments raised by the applicant, despite the predominant tendency to disregard earlier registrations.

In one of such judgments case file T-100/16 (trademark – MAX PLAY) General Court indicated that earlier trademark registrations, particularly obtained in other English speaking countries (regardless of EU or non-UE Member States) are not given decisive weight for the purposes of registering an EU trade mark, but are merely to be taken into consideration. In other (earlier) judgment case file T-405/04 (trademark- Caipi), Court of First Instance stated that other Offices decisions regarding the same trademark are not binding but are an indication. In judgment T-459/05 (trademark – Manufacturing score cards), Court of First Instance indicated that registrations of trademark in other countries are of relative importance when examining EU trademark application.

On the basis of the above judgements, one can conclude that registration offices, when assessing the above arguments (i.e. their previous decisions or decisions issued in third countries) cannot limit themselves to a mere rejection thereof. Since the decisions on registration of earlier trademarks are an indication of relative (but nevertheless) validity of the trademarks and a factor taken into account in the examination of absolute grounds of refusal, registration office should present a justification of rejection to register a trademark with substantive arguments. Lack of a sufficient justification is a frequent argument leading to annulling the decision at both national and European level. It seems that forcing the body to confront itself with its previous decisions and to justify a change in the assessment should lead to uniformity of the practice in terms of absolute grounds of trademark registration, or –  at least – make the offices take less hasty and arbitrary decisions.