Under European Union trade mark law, determining whether a word may be registered as a trade mark cannot be based solely on its dictionary meaning. The decisive question is how that word is perceived by the relevant public in relation to the goods or services for which registration is sought. A word may function as a trade mark if it identifies the commercial identity of an undertaking and indicates the commercial origin of its products. Conversely, where the same word directly informs consumers of the type, nature or another characteristic of the goods, its registration as a trade mark may encounter significant legal obstacles. The decision issued by the European Union Intellectual Property Office (EUIPO) on 3 November 2026 concerning the “VINI” mark applied for by SUPER BOCK BEBIDAS, S.A. provides a recent example of the importance of this distinction, particularly in the wine and alcoholic beverages sector.
At the centre of the decision lies a seemingly simple word which nevertheless gives rise to significant consequences under trade mark law: “VINI”. In examining international registration No. 1913521 insofar as it designated the European Union, EUIPO objected to the protection of the mark in respect of goods in Class 33, namely “alcoholic beverages, except beers” and “wine”. The Office’s principal ground was that “VINI” is the plural form of the Italian word “vino” and means “wines”. The Office further established that, in Latvian, the word “vīns” means wine and “vīni” is its plural form. Accordingly, in EUIPO’s view, when encountering the mark, the relevant consumers would perceive it not as a sign identifying the commercial origin of goods from a particular undertaking, but rather as a word denoting wines or alcoholic beverages made from fermented grapes.
This assessment is based on Article 7(1)(b) and (c) of the European Union Trade Mark Regulation (Regulation (EU) 2017/1001 – EUTMR). Article 7(1)(b) provides that trade marks which are devoid of any distinctive character shall not be registered, whereas Article 7(1)(c) precludes the registration of trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, time of production or other characteristics of the goods. Although these two provisions are closely related, they address different legal issues. The former concerns the capacity of a mark to indicate commercial origin in the eyes of consumers, whereas the latter concerns whether the mark describes characteristics of the goods. Nevertheless, in practice, these two absolute grounds for refusal frequently arise together. Indeed, the EUIPO Trade Mark Guidelines recognise that a word mark found to be descriptive under Article 7(1)(c) will also generally be regarded as devoid of distinctive character under Article 7(1)(b) in relation to the same goods (EUIPO, Trade Mark Guidelines, Part B, Section 4, Chapter 1; see also General Court, 12 June 2007, Case T-190/05, Twist & Pour, EU:T:2007:171, paragraph 39).
To understand the legal significance of the VINI decision, it is first necessary to consider why descriptive trade marks are excluded from registration. The fundamental purpose of trade mark law is to enable one undertaking’s goods and services to be distinguished from those of other undertakings. A trade mark helps consumers identify the commercial origin of the products they encounter. By contrast, a word that directly denotes the name, type or nature of a product will, as a general rule, be incapable of fulfilling this function. For instance, allowing an undertaking operating in the wine sector to register terms such as “wine”, “vino” or their equivalents in other languages as exclusive trade marks, thereby preventing other producers from using the same terms in their commercial activities, would be incompatible with the competitive structure underpinning trade mark law. Other wine producers also need such terms to describe, promote and market their products to consumers.
The central issue, therefore, is not whether a word has been used by an undertaking for the first time or whether it has become associated with that undertaking. Rather, the question is whether the word constitutes a descriptive expression that should remain available for use by all market operators in relation to the goods concerned. Article 7(1)(c) EUTMR seeks to prevent descriptive signs from being placed under the exclusive control of a single undertaking. This approach has also been clearly established in the settled case law of the Court of Justice of the European Union.
In its judgment of 4 May 1999 in Windsurfing Chiemsee (Joined Cases C-108/97 and C-109/97, EU:C:1999:230, paragraph 25), the Court of Justice emphasised the public interest underlying the prohibition on registering descriptive signs. According to the Court, this provision seeks to ensure that signs which may describe characteristics of the goods or services concerned remain freely available for use by all undertakings. Although the case concerned a sign indicating geographical origin, the principle established by the Court is not limited to geographical names. Words describing the type, nature or other characteristics of goods are likewise protected by the same public interest considerations.
The application of this approach to the VINI decision is relatively straightforward. If an undertaking operating in the wine sector were to register the word “VINI” as its own trade mark, this could create an obstacle for other undertakings wishing to use the same word to describe or promote their wines. In such a scenario, the trade mark proprietor would not merely obtain a right protecting its own commercial identity; it would also acquire an exclusive right over a word that should form part of the common vocabulary of the sector. This is the fundamental reasoning underlying EUIPO’s objection. The Office considers that granting an exclusive right arising from trade mark registration over such a word to a major beverage producer such as SUPER BOCK BEBIDAS, S.A. could restrict the legitimate descriptive use of that term by other market participants.
In this context, the Court of Justice’s judgment of 23 October 2003 in DOUBLEMINT (Case C-191/01 P, EU:C:2003:579) is also particularly significant. In that dispute, Wm. Wrigley Jr. Company sought to register the word “DOUBLEMINT” as a trade mark for chewing gum, but EUIPO refused the application on the ground that the sign was descriptive. When the dispute reached the Court of Justice, the Court held that, for a sign to be refused under Article 7(1)(c), it was not necessary for the sign to have actually been used descriptively at the date of filing. It was sufficient that the sign could be used in trade to designate a characteristic of the goods. The principle established by the Court in paragraph 32 of its judgment is that the registration objection may arise where at least one of the possible meanings of a word designates a characteristic of the goods concerned.
This judgment is directly relevant to the assessment of the VINI dispute. Whether SUPER BOCK BEBIDAS, S.A. has previously presented the word VINI to consumers specifically in the sense of “wine”, or whether competing undertakings have actually used the word, is not in itself decisive. What matters is whether the relevant Italian and Latvian speaking consumers would perceive the word as an expression describing the type or nature of the goods. According to EUIPO’s approach, the meaning of VINI as “wines” is sufficient to give rise to such a perception. Consequently, the company’s intention to use the word as a distinctive element of its own commercial identity does not remove its objectively descriptive character.
Another important aspect of the decision is the significance attached by EUIPO to the linguistic dimension of the assessment. The decision specifically takes Italian and Latvian speaking consumers into account. This approach is closely connected with the multilingual structure of European Union trade mark law. As a general rule, an EU trade mark provides unitary and uniform protection throughout the European Union. Article 7(2) EUTMR further provides that the absolute grounds for refusal set out in Article 7(1) may apply even where they exist in only part of the Union. In other words, the fact that a word may be distinctive for German, English or French speaking consumers does not necessarily make it registrable as an EU trade mark if the same word is clearly descriptive for Italian- or Latvian-speaking consumers.
Accordingly, the fact that English or German speaking consumers may not directly perceive the word VINI as meaning “wine” is not decisive in the present application. Under Article 7(2), the descriptive perception of the word by one of the relevant consumer groups may be sufficient to result in a refusal at EU level. This is a natural consequence of the unitary character of the EU trade mark. Indeed, Article 1(2) EUTMR provides that an EU trade mark shall have unitary character and shall have equal effect throughout the Union, subject to the exceptions provided for in the Regulation.
Nevertheless, an important qualification must be made: the fact that a word has a meaning in any EU language does not automatically mean that it is descriptive in relation to all goods and services. The assessment must necessarily be carried out by reference to the relevant public and the goods specified in the application. The EUIPO’s own examination guidelines likewise state that the assessment of distinctiveness and descriptiveness must be based on the relevant goods and services and the perception of the relevant public (EUIPO, Trade Mark Guidelines, Part B, Section 4, Chapter 1). Therefore, in the VINI decision, it is necessary to consider not merely the dictionary meaning of the word in Italian and Latvian, but also what that meaning conveys to consumers in relation to the alcoholic beverages concerned.
One of the noteworthy aspects of the decision is that the application did not concern a word mark alone. EUIPO assessed the application as a figurative mark consisting of the word “Vini” written in black and a stylised black leaf device positioned above the word. In applications of this kind, the contribution of the figurative elements, including the shape, colour, typeface and other graphic features, to the overall perception of the mark must also be examined. Indeed, figurative elements added to a descriptive word may, in certain circumstances, confer a sufficient degree of distinctive character on the mark. However, not every graphic arrangement automatically renders a descriptive word registrable.
In the VINI decision, EUIPO stated that the typeface used was ordinary and that the leaf device above the word would be perceived as a grape leaf. According to the Office, since a grape leaf is a visual element directly associated with wine and grape production, it reinforces rather than removes the descriptive meaning of the word. Thus, the graphic presentation of the mark was not considered to create an independent and distinctive perception of commercial origin in the minds of consumers; instead, it was regarded as a complementary element reinforcing the concept of wine.
This assessment also highlights a common issue arising in the registration of figurative marks. Adding an ordinary typeface, a simple colour or a figurative element directly associated with the product to a descriptive word may not confer sufficient distinctive character on the mark as a whole. What matters is not merely the presence of a graphic element, but whether that element creates, in the perception of consumers, an indication of commercial origin that is independent of or goes beyond the meaning of the word itself. In other words, the mere addition of a figurative element to a mark and the acquisition of distinctive character by the mark as a whole are not one and the same.
EUIPO also considered the difference between the spelling “VINI” used in the application and the Latvian word “VĪNI”. In Latvian, the first “i” carries a macron, whereas this diacritical mark was omitted in the application. However, the Office stated that consumers would perceive this difference as a mere spelling variation and that it would not remove the descriptive meaning of the word. This approach demonstrates that, under trade mark law, the meaning perceived by consumers is relevant alongside the formal spelling of words. A minor alteration to a letter or the omission of a diacritical mark may not overcome the descriptiveness objection where the relevant public can readily recognise the underlying meaning of the word.
Indeed, this approach is consistent with the broader method of assessment established by the Court of Justice in DOUBLEMINT. The existence of different meanings of a word, or a formal alteration to its spelling, does not necessarily eliminate its descriptive meaning. The decisive question remains whether the relevant public would perceive the sign as conveying information about the characteristics of the goods. Accordingly, the omission of the macron in the word VINI did not, in EUIPO’s view, transform the word into a new and distinctive trade mark element.
Nevertheless, another aspect of the decision’s reasoning deserves particular attention: the scope of the refusal. EUIPO refused protection not only for wine, but also for the broader category of “alcoholic beverages, except beers”. This category is sufficiently broad to include gin, vodka, whisky, rum and other distilled alcoholic beverages, in addition to wine. These products do not all share the same characteristics as wine produced through the fermentation of grapes. Accordingly, the conclusion that the entire category of alcoholic beverages, except beers, is descriptive on the basis that VINI means “wines” raises a further issue that may be open to legal debate.
Of course, the fact that the general specification of goods in the application also covers wine, and that wine falls within the broader category, may have influenced EUIPO’s assessment. Nevertheless, it should be borne in mind that the assessment of descriptiveness must be sufficiently specific to the goods and services concerned. Under Article 7(1)(c), the relevant grounds for refusal must be established in relation to the goods or services concerned; applying the same objection to an entire category of goods is justified only where a common ground for refusal exists in respect of that category (EUIPO, Trade Mark Guidelines, Part B, Section 4, Chapter 6, “Scope of Objections to the Goods and Services”). Therefore, the reasoning underlying the VINI decision, particularly in relation to alcoholic beverages other than wine, may constitute an aspect warranting more detailed examination in any potential appeal proceedings. The important point is that the fact that a word is descriptive in relation to a particular subcategory of goods should not automatically and without adequate reasoning result in the refusal of all goods falling within the broader category.
On the other hand, the fact that a sign is initially ineligible for registration because it is descriptive does not mean that it can never enjoy trade mark protection. Article 7(3) EUTMR provides that a sign falling within the grounds for refusal under Article 7(1)(b), (c) or (d) may nevertheless be registered if, through the use made of it, it has acquired distinctive character in relation to the relevant goods or services. In legal literature and practice, this concept is referred to as “acquired distinctiveness through use”.
For this exception to apply, it is not sufficient merely to demonstrate that the mark has been used for a long period of time. The applicant must establish that a significant proportion of the relevant public has come to perceive the sign not as an ordinary word describing the type or nature of the product, but as a trade mark identifying the goods as originating from a particular undertaking. The EUIPO guidelines on this subject likewise explain that it must be demonstrated that consumers are able to identify the goods as originating from a particular commercial undertaking by virtue of the sign (EUIPO, Trade Mark Guidelines, Part B, Section 4, Chapter 14, “Acquired Distinctiveness Through Use”; see also General Court, 15 December 2005, Case T-262/04, Briquet à Pierre, EU:T:2005:463, paragraph 61).
Although such a claim could theoretically be advanced in relation to VINI, it would need to be supported by substantial evidence. In particular, sales figures, market share, advertising and promotional activities, the duration of use of the mark on the market, consumer surveys, distribution networks and the mark’s recognition in the relevant countries may all be important. However, the geographical scope of the evidence is also significant. Since Article 7(2) EUTMR allows a ground for refusal to arise in only part of the Union, acquired distinctiveness through use must also be established in the relevant territories where the objection exists. Accordingly, a high level of brand recognition achieved solely in the Portuguese or Spanish markets would not, in itself, establish the perception of Italian- and Latvian-speaking consumers in their respective markets.
In conclusion, the VINI decision once again illustrates the fundamental approach adopted under European Union trade mark law towards the protection of descriptive words. An undertaking’s intention to make a word part of its commercial identity does not eliminate the descriptive nature of that word where it should remain available for use by all market operators in relation to the goods concerned. The exclusive rights granted by trade mark law enable undertakings to distinguish and protect their commercial origin identifiers; however, such rights cannot be used to turn words forming part of the common vocabulary of an industry into private property.
In the SUPER BOCK BEBIDAS, S.A. decision, the fact that the word “VINI” means “wines” in Italian and Latvian, that the grape leaf device reinforces this meaning, and that the spelling variation does not alter the meaning perceived by consumers formed the basis of EUIPO’s grounds for refusal. In this respect, the decision is not merely an assessment of the dictionary meaning of a word; it also illustrates how the balance between individual exclusive rights, free competition and the public interest is established under trade mark law.
The fundamental principle of trade mark law is clear: an undertaking may acquire rights in a sign that distinguishes its goods from those of other undertakings in the minds of consumers; however, it cannot monopolise words that its competitors also need in order to describe their products accurately and fairly. The true significance of the VINI decision lies in the way this principle is applied to the wine and alcoholic beverages sector.
