When is basic English understood in EU trade mark disputes? What must be proven
Key takeaways
- A party relying on the relevant public's knowledge of English must prove it: understanding cannot be assumed.
- The Boards of Appeal identify four situations in which English may be treated as understood.
- The CEFR level of a word (A1/A2 in particular) is a useful indicator, not an automatic rule. The General Court requires a case-by-case analysis.
- The outcome depends on the term, the relevant public, the territory and the goods or services concerned.
- The linguistic assessment should be planned as part of the evidential strategy from the outset.
At the 40th MARQUES Annual Conference in Lisbon, Sven Stürmann, President of the EUIPO Boards of Appeal, and the session chairs provided a particularly useful update on two connected subjects: the assessment of English-language terms in EU trade mark disputes.
The practical point for brand owners and practitioners is simple: a party relying on the relevant public’s knowledge of English must establish it. The fact that a word appears familiar to an English-speaking lawyer, business owner or consumer does not mean it will be understood across the relevant territory.
This matters because the perceived meaning of an English word may influence whether it is regarded as descriptive or weak, the conceptual comparison of competing marks, and ultimately the assessment of likelihood of confusion
Why this matters in practice
The meaning of an English word can affect several parts of the assessment: descriptiveness, inherent distinctive character, conceptual comparison and, ultimately, likelihood of confusion.
If the relevant public understands the word, it may be treated as weak or descriptive, and the comparison of the marks will focus on the other elements. If it does not, the same word may keep a higher degree of distinctiveness and carry more weight in the comparison.
The question is particularly delicate in the EU because the assessment is made by reference to the relevant public across the Union. A term that is understood in one Member State may not be understood in another, and this can change the outcome of a case.
English understanding is not automatic
The starting principle is straightforward: a party relying on the relevant public’s knowledge of a foreign language must prove it.
According to the methodology presented by the Boards of Appeal, English may be regarded as understood in four principal situations. These are the situations presented at the session, not an exhaustive or statutory list:
- English is widely understood in the relevant Member State.
- The word forms part of basic English vocabulary across the EU.
- The English term has a close linguistic equivalent in the language of the relevant public.
- The term is understood in the context of the relevant goods or services, including by specialist or professional consumers.
This gives parties a structured framework for a question that is otherwise often argued in very general terms. It also encourages them to define the relevant public carefully and to put forward evidence about the specific term, territory and market.
CEFR levels: a guide, not a rule
The Common European Framework of Reference for Languages (CEFR) is one of the tools used in the analysis. As a practical indication, an A1 or A2-level word may support an argument that it belongs to basic English vocabulary. Learner dictionaries, such as those of Collins and Cambridge, indicate the level associated with many words.
However, the exercise is not mechanical:
- The General Court has broadly accepted the Boards of Appeal’s methodology, but has stressed that there is no rule that every A1/A2 term is automatically basic English understood across the EU.
- A word classified above A2 is not necessarily irrelevant. A professional public may understand industry-specific English terminology even where the word would not be basic vocabulary for the general public.
- Dictionaries do not always classify the same word at the same level. It is therefore advisable to record the source and the date of consultation.
Three decisions illustrating the approach
Recent decisions show how differently the same kind of question can be resolved depending on the term and the public.
iTEC SkyNex (fig.) / SKYNET
"sky”, an A2-level word, was treated as basic English understood throughout the EU. It was weak for the class 39 transport services at issue, and the Board of Appeal found no likelihood of confusion.
wonderjeans (fig.) / W wonders (fig.)
“wonder”, a B1-level word, was not considered to be understood by the relevant public in Bulgaria, Spain and Italy. The Board of Appeal found a likelihood of confusion for the class 25 goods.
G MOTION / GM GERMANY MOTIONS
“motion” is not basic vocabulary, but the professional public for machinery, engines and motors was expected to understand it. It was descriptive for that public, and the Board of Appeal found no likelihood of confusion for the class 7 goods.
Taken together, these cases show why the relevant public must be defined carefully. The same English word can be assessed differently depending on weather the audience is the general public, a professional public or the consumers of a particular Member State
What this means for our clients
When choosing or filing a mark that contains an English word
- Assess in advance how the word may be perceived in the main target markets, and not only in English-speaking markets.
- Check whether the word has a close equivalent in other EU languages, which can make it understood even without English skills.
- Consider the level of attention of the relevant public: whether it comprises general consumers or professionals
How to prepare: a practical checklist
The linguistic assessment should be planned as part of the evidential strategy from the outset, whether you are choosing a mark or already involved in opposition, invalidity or appeal proceedings. In practice, this means:
- Define the relevant public by reference to the goods or services, the territory and the level of attention.
- Check learner dictionaries (Collins, Cambridge) and record the CEFR level, the source and the date.
- Look for close equivalents in the national languages concerned.
- Gather sector-specific evidence where the relevant public is professional or technically informed.
- Challenge unsupported statements that English is simply “widely understood”.
A positive update on the Boards of Appeal's work
The session also covered the Boards of Appeal's initiatives to improve consistency and access to their case law: research reports, Grand Board referrals, the Case Law Analysis Tracking System (CATS), a user-feedback initiative (FEED) and AI-assisted research tools.
We welcome the Boards of Appeal’s openness in sharing these projects with the profession and their evident commitment to engaging with users of the system. The update was informative, candid and practical, and the session chairs deserve credit for guiding a technically detailed discussion in a way that remained accessible and relevant to brand owners and advisers.
The lesson is simple: in EU trade mark disputes, English-language arguments should rest on evidence, not assumption.
The Boards of Appeal methodology gives practitioners a practical framework. The General Court’s case law ensures that the framework remains flexible and fact-sensitive. Together, they reinforce the need to look carefully at the relevant public, the territory, the goods or services and the specific meaning of the word relied upon.
We are grateful to Sven Stürmann and the session chairs for a thoughtful and highly useful update, and welcome the Boards of Appeal’s continued efforts to strengthen consistency, transparency, technological capability and dialogue with the users of the EU trade mark system.
Considering a mark that contains an English word, or facing a dispute that turns on how such a word is perceived?
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