EUIPO’s practice excludes conversion for all “English-speaking” Member States and not only for Member States in which English is “one of the official languages”.
If an EUTM application consists of English words that, in the perception of the relevant English-speaking public in the EU, are descriptive and/or non-distinctive, EUIPO refuses the application on these absolute grounds of Art. 7 (1) (c) and/or Art. 7 (1) (b) EUTMR in combination with Art. 7 (2) EUTMR.
If the Applicant then requests conversion into national applications in EU Member States after it let the refusal decision become final, Art. 139 (2) EUTMR in connection with Art. 140 (4) EUTMR stipulate that conversion is excluded for those Member States in which English is “one of the official languages”.
Despite the clear wording of Art. 140 (4) EUTMR – “[...] in which that language is one of the official languages.” – EUIPO does apply the provisions stipulating exclusion of conversion more broadly to all EU Member States in which “the meaning of the sign will also be understood”.
For example:
A refusal decision finds that an EUTM application is “non-distinctive in English-speaking territories of the European Union namely, Ireland and Malta” (which are the only EU Member States in which English is one of the official languages). It goes then on to further find that “the meaning of the sign will also be understood in Sweden, Denmark, Finland, and the Netherlands, since English is widely studied and spoken by the public in the abovementioned Member States.”
In this case EUIPO will not only reject a conversion request relating Ireland and Malta, but also insofar as it relates to Sweden, Denmark, Finland, and the Benelux (of which the Netherlands are a part).
Even though the text of the above provisions stipulating exclusion of conversion applies only to Member States “in which that language is one of the official languages”, EUIPO applies exclusion of conversion more broadly to all English-speaking Member States. In doing so, it refers to case law of the General Court in T-253/20, par. 35 – It’s like milk but made for humans where the General Court found – in the context of applying absolute grounds for refusal – that “the English-speaking part of the European Union does not only consist of the countries in which English is an official language, but also of those in which, at the very least, English is widely understood, which includes, in particular, Denmark, the Netherlands, Finland and Sweden”.
In my opinion, this practice is somewhat problematic insofar as the relevant provisions concerning (exclusion of) conversion expressly refer to Member States “in which that language is one of the official languages” and not to “English-speaking part of the European Union”. Moreover, the practice creates legal uncertainty because the list of “English-speaking” Member States as defined so far by case law of the General Court is not exhaustive.
At least, a (partially) deficient conversion request can be “repaired” by re-filing a fresh conversion request leaving out the Member States for which conversion is excluded. The fresh conversion request can be filed after the three-months deadline to file conversion if the original deficient request was filed in good time.
An even better circumvention of the problem is to not letting the refusal decision become final but withdrawing the EUTM application beforehand – conversion into all EU Member States remains possible in this scenario.
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