According to European Trademark Law, third parties have the right to file an application for the invalidation of a registered European Union Trademark based on the absolute grounds for refusal under Article 7 of the European Trademark Regulation 207/2009. One of the most technical and not easily conceivable grounds of refusal is the one included in Article 7 (1) (g) according to which “trademarks which are of such a nature as to deceive the public, for instance as to the nature, quality or geographical origin of the goods or service” should not be registered and can be invalidated after a third party’s application.

According to EU settled case-law, the infringement of Article 7(1)(g) EUTMR, “presupposes the existence of actual deceit or a sufficiently serious risk that the consumer will be deceived” (04/03/1999, C-87/97, Cambozola, EU:C: 1999:115, §41), while even, “a mere theoretical possibility that the public may be mistaken does not itself fall within an objection pursuant to Article 7(1)(g) EUTMR” (decision of 17/04/2007, R 1102/2005-4, “SMARTSAUNA”, § 32). Thus, “only where the targeted consumer is made to believe that the goods and services possess certain characteristics, which they do not in fact possess, will he be deceived by the trade mark”. (24/09/2008, T-248/05, I.T.@Manpower, EU:T:2008:396, §65). When broad categories of goods are registered and use of the mark could be deceptive for only some of the goods within the categories, whilst not for other goods within the same categories, the mark as such is not considered to be deceptive. It is in general assumed that the mark will be used in a non-deceptive manner. In other words, Article 7(1)(g) EUTMR does not apply if the specification has broad categories that include goods for which use of the trade mark would be non-deceptive.