The EUIPO does not distinguish between large corporations, small businesses or internationally renowned artists when examining a trade mark application. A recent example can be found in the refusal of the European Union trade mark LUX, filed by singer Rosalía for goods and services in Classes 9, 25 and 41. The decision confirms a trend we have been observing in recent years: an increasingly strict application of the absolute grounds for refusal.

The decision is particularly noteworthy given that a search of the EUIPO database reveals 49 European Union trade marks containing or consisting of the term “LUX” registered since 1996. This appears to evidence an evolution in the Office’s approach, which is currently applying a more demanding standard to signs considered laudatory or lacking sufficient distinctiveness.

The EUIPO refused registration of the European Union trade mark LUX for all goods and services in Classes 9, 25 and 41 on the grounds that it lacked distinctive character, pursuant to Articles 7(1)(b) and 7(2) of the European Union Trade Mark Regulation (EUTMR). The Office concluded that the term “LUX” would be perceived by a section of the relevant public, in particular English-speaking and Romanian-speaking consumers, as a laudatory reference to luxury, premium or high-quality goods and services, rather than as an indication of commercial origin.

The applicant’s representative argued that the application concerned the term “LUX”, not “LUXURY”, and therefore that the objection lacked foundation. The representative also challenged the reliability and relevance of the lexicographical sources relied upon by the EUIPO in attributing a laudatory meaning to the sign, contending that “LUX” has other meanings, such as the unit of illuminance measurement or the Latin word for “light”, which would confer an imaginative and distinctive character on the sign in relation to the goods and services applied for. Finally, the representative relied on the existence of prior registrations of LUX trade marks before both the EUIPO and various national trade mark offices, as well as the acceptance of an identical application in the United Kingdom, as precedents supporting the registrability of the sign.

However, the Office rejected these arguments, finding that Romanian-speaking and English-speaking consumers would immediately perceive the term as a reference to luxury goods or services, without considering any of its other possible meanings.

Lack of Distinctiveness or Descriptiveness?

In our view, the decision raises certain questions. While it may be accepted that the term LUX conveys an idea of luxury or superior quality, it might have been more appropriate to base the refusal on Article 7(1)(c) EUTMR, relating to descriptive signs, rather than on Article 7(1)(b), which concerns lack of distinctive character.

In fact, the EUIPO’s reasoning centres on the proposition that the sign communicates a characteristic or quality of the relevant goods and services, namely their luxurious or exclusive nature. Such reasoning appears to fit more naturally within the prohibition on registering descriptive signs than within a finding of lack of distinctiveness. Although these two absolute grounds are often closely connected, they are not equivalent, and the distinction between them is legally significant.

Furthermore, it is not clear that the refusal should necessarily be assessed in the same way across all of the classes applied for.

In Class 25, which covers clothing and other fashion-related goods, the Office’s conclusion is easier to understand. The fashion industry frequently uses expressions evoking luxury, exclusivity or premium quality, and consumers may therefore perceive LUX as nothing more than a promotional message.

The situation appears less straightforward, however, with regard to Classes 9 and 41. Class 9 included musical recordings, electronic publications, audiovisual media and electronic devices, while Class 41 covered entertainment services and live musical performances. In these fields, it is less obvious that consumers would automatically perceive LUX as a reference to a characteristic of the goods or services. On the contrary, it could be understood as a fanciful name, an artistic reference, or even an allusion to the Latin word lux (“light”), particularly given that the applicant is a musical artist.

Accordingly, it is open to question whether consumer perception would truly be as described by the EUIPO in respect of all the goods and services claimed.

In any event, the decision is not yet final. The applicant may lodge an appeal before the EUIPO Boards of Appeal until 8 September 2026. It will be interesting to see whether the Boards uphold the examiner’s approach or adopt a more flexible interpretation, particularly in light of the numerous earlier trade marks containing the term LUX that have been registered by the Office itself. Any appeal may also help to clarify more precisely when a term should be regarded as merely laudatory and when it retains sufficient capacity to identify the commercial origin of the goods or services it designates.