EUIPO’s 2024 Examination Guidelines – two years on, NFTs, digital assets and geographical indications

The past year has seen fewer substantive updates in EU trade mark practice, with the 2025 revisions primarily focused on design law. For those interested in the latest developments in relation to designs, Mike Shaw’s article provides a detailed overview. Nonetheless, the 2024 Examination Guidelines introduced several important changes for trade marks, particularly in relation to procedural clarity, digital evidence, and classification of emerging technologies. It is worth revisiting these updates to assess their practical impact.

The Guidelines 

Concerning Trade Marks, the European Union Intellectual Property Office’s (EUIPO) Guidelines for Examination took effect two years ago on 31 March 2024 and those changes are still reflected mainly unchanged in the 2025 version. The updates aimed to refine procedural clarity, align with evolving case law, and enhance efficiency in trade mark and design examination. As we are already almost two years into these updates in practice, we have considered their effects in practice below. 

Evidence submission

So where did we notice major shifts and improvements? A significant addition is the structured approach to evidence submission (Part A, Section 10). With increasing reliance on digital platforms and technology, the guidelines provide clearer requirements for online evidence, specifying for example that mere website references are insufficient. 

Especially for proving evidence of genuine use when a trade mark is challenged for non-use, a major change has been that printouts from editable websites, such as the online encyclopaedia Wikipedia or similar sources, cannot be considered to be probative on their own. Another area of clarity concerns social media evidence, which is accepted but there are guidelines on how to ensure it carries credible weight, for example including screenshots, information about publication dates, URLs and file analytics can corroborate this type of evidence to improve its credibility. 

Recent Appeal decisions align with this approach in the guidelines, for example, in Chanel v Simb d.o.o (EUIPO, Fifth Board of Appeal, 20 March 2025, R 1603/2024‑5), the Fifth Board accepted supplementary appeal evidence and reiterated that Wikipedia extracts are inherently unreliable and cannot be probative on their own; historic advertising without proof of distribution, reach or territorial relevance carries little weight. By contrast, the decision also highlights that dated social‑media posts and YouTube campaign metrics, when tied to the relevant territory and corroborated by national press and outdoor campaigns, can support enhanced distinctiveness through use. 

Public morality and policy – clarifying refusals under Article 7(1)(f)

The updated guidelines also provide further clarity on refusals based on public policy or accepted principles of morality under Article 7(1)(f) EUTMR. The EUIPO now emphasises a contextual approach, considering the likely perception of the relevant public at the time of filing. Marks that contain offensive language, incite hatred, or promote discrimination are likely to be refused, even if stylised or used in niche markets. This reinforces the Office’s commitment to ensuring that trade marks do not undermine fundamental societal values.

Procedural efficiencies 

Procedural refinements include enhancements to register operations (Part M, Section 1), covering name and address changes, trade mark alterations, and licensing agreements. These updates streamline administrative procedures and ensure consistency in official records. Further efficiency improvements relate to the processing of Madrid Applications. 

Restoring lapsed rights – what’s a valid excuse for missing a renewal deadline?

Another important and interesting update concerns the restoration of lapsed rights (Part A, Section 9), which clarifies the criteria for reinstatement of rights when procedural deadlines are missed. The criteria of “all due care” when considering restoring lapsed rights has been restrictively interpreted by the Courts, and the guidelines now explain in some detail how different categories of unfortunate circumstances are likely to be considered. There are guidelines on how this principle applies when certain common errors occur, such as when an email is not delivered, if there are force majeur errors by the EUIPO causing a lapse of rights, and even how to approach financial constraints of the applicant that cause the failure to pay renewal fees. 

The revised framework enhances legal certainty for applicants seeking to restore lapsed rights due to unforeseen circumstances. Even so, in practice it remains the case that it is extremely difficult to restore an EU trade mark or design, placing a much higher duty of care on applicants and representatives than in many other jurisdictions.  

Beyond these procedural adjustments, the 2024 guidelines also introduce revisions related to digital assets and NFTs, which are very topical points and are discussed in further detail below, both in relation to the new guidelines and in a more general context. 

Withdrawing an application before the appeal period ends – the Nightwatch Decision

Recent case law has clarified the interpretation of Article 139(4)(b) EUTMR, which governs the conversion of a European Union Trade Mark (EUTM) application following refusal. In Nightwatch (R1241/2020-4), the Fourth Board of Appeal held that withdrawal of an EUTM application during the appeal period prevents the refusal from becoming final, thereby preserving the applicant’s right to convert the application into national applications within the EU without being restricted in jurisdictions where the same grounds of refusal would prohibit a conversion. This interpretation marked a departure from the EUIPO’s longstanding practice, prompting the Executive Director to refer the matter to the Grand Board of Appeal under Article 157(4)(l) EUTMR.

In its reasoned opinion dated 15 October 2024, the Grand Board upheld the earlier decision, confirming that conversion remains possible provided the refusal has not yet become final at the time of withdrawal. The Board clarified that a decision only becomes final if no appeal is filed and no intervening event renders it inoperative. Withdrawal during the appeal period and before an appeal decision is issued is such an intervening event, meaning the refusal produces no legal effect and cannot bar conversion.

Practical example

Suppose an EUTM application is refused because the sign is considered descriptive for certain goods or services under Article 7(1)(c) EUTMR. Under Article 139(4)(b), conversion would ordinarily be barred in any Member State where the same descriptive meaning applies. This can present difficulties where the reasoning relies on language-specific considerations, as the objection may extend to several jurisdictions. However, following the Nightwatch decision, if the applicant withdraws the EUTM during the appeal period but before the refusal becomes final, the refusal produces no legal effect and conversion remains possible. This offers a valuable procedural safeguard for applicants seeking to preserve national filing opportunities.

Classification of virtual goods, virtual services and NFTs

Virtual goods are proper to Class 9, and the goods or type of goods must be specified in order to be accepted (e.g. “virtual goods, namely, virtual clothing”). The same applies to retail services for virtual goods in Class 35. There is no need to specify the digital form in which the virtual goods appear (such as “digital files”, “downloadable software” etc.) and terms without this specification will be accepted.

As for virtual services, these will be classified in accordance with their underlying nature and real-world impact. For example, “financial consultancy provided through a virtual environment” is proper to Class 36 since the real-world impact remains the same, whether or not the service is provided in person or virtually. On the other hand, the “provision of virtual food and drink” would belong to Class 41 as a form of entertainment, since it is impossible for virtual food and drink to nourish people in the same way services for their real-world counterparts in Class 43 would.

The term “non-fungible tokens (NFTs)” on its own is not acceptable in Class 9, as it is necessary to specify the type of asset authenticated by the NFT.  NFTs for goods are classified according to what the NFT is linked to. For example, “virtual handbags authenticated by NFTs” will be proper to Class 9 whereas “handbags authenticated by NFTs” would fall within Class 18. As for NFTs relating to services, the level of detail required will depend on whether the services relate to (i) assets authenticated by NFTs (e.g. “providing a marketplace for trading goods authenticated by NFTs” or “retail services of virtual clothing authenticated by NFTs”), or (ii) NFTs per se (e.g. “technological services relating to NFTs”). 

Assessing distinctiveness in relation to virtual goods and services

When assessing the distinctiveness of marks in respect of virtual goods and services, their real-world counterparts and the manner in which the latter are marketed or perceived can play an important role in the assessment. In particular, where the virtual goods or services depict or emulate their real-world counterparts, then marks which are considered non-distinctive for the real-world goods or services will likely also be non-distinctive for their virtual equivalents. However, this must be assessed on a case-by-case basis.

In Case T‑1163/23 (Glashütte ORIGINAL) which concerned the distinctiveness of the mark Glashütte ORIGINAL for, inter alia, downloadable virtual watches and clocks, the General Court upheld the EUIPO’s decision refusing the mark. It was found that if the virtual goods merely represent real-world goods, or if they represent or emulate the functions of real-world goods, the relevant public’s perception of the real-world goods can in principle be transferred to their virtual counterparts. Hence consumers would associate the mark with the town of Glashütte’s established reputation for watchmaking, and the mark was found to be descriptive and non-distinctive.

Comparison of virtual goods vs real-world goods

Virtual goods are not identical to their real-world counterparts. Virtual and real-world goods may be deemed similar, but this is a matter of law that must be assessed by the Office. This assessment is restricted to the facts, evidence and arguments provided by the parties, as well as well-known facts. 

Given the novelty of virtual goods, the Office seems reluctant to assume “well-known facts” regarding the market and it is therefore crucial for parties to submit arguments and evidence in order to support a finding of similarity between the relevant goods. Relevant factors include whether it is usual for producers of the real-world goods to produce virtual counterparts (or vice versa), and whether the real-world goods have the same function and purpose as their virtual counterparts, etc.

In EUIPO Opposition No. B003199946 (VINICIO v INITIO), the Opposition Division held that retail services for virtual goods such as cosmetics were dissimilar to physical cosmetic goods. This was largely because the opponent did not provide any arguments or evidence to support the position that retail services for the virtual goods were similar to their real-world counterparts, and the EUIPO found that similarity could not be assumed. This decision reinforces the EUIPO’s position regarding the importance of providing evidence when alleging similarity between physical and virtual goods or services.

Genuine use of virtual goods – mere promotional activity

It has been clarified that use on virtual goods in online or virtual environments merely for promoting or facilitating the purchase of real-world goods would not constitute genuine use of the mark for virtual goods. Genuine use for virtual goods requires that the virtual goods themselves are offered commercially.

EU graphical indications for craft and industrial products 

What has changed?

From 1 December 2025 producers and manufacturers of craft and industrial products will be able to seek protection for geographical indications (GIs) across the EU. This protection will complement the protection currently available for GIs relating to food and beverage products. This is a result of a new Regulation that came into force on 16 November 2024. Prior to this, producers of industrial and craft products have had to rely on national GI systems, since the related laws and regulations were not harmonised across the EU. As a result of the new Regulation, EU member states must inform the EU Intellectual Property Office (EUIPO) of existing national GIs to be registered under the new EU scheme prior to 2 December 2026, when existing national GI rights will cease to exist. 

Who will this affect?

This change will affect producers of products such as jewellery, glass, shoes, textiles, porcelain, musical instruments and furniture that have unique qualities linked to a specific geographical area. For example, “Luthier de Cremona” is a French geographical indication referring to string instruments crafted by luthiers in the Cremona region. The new system will also be open to GIs from non-EU countries. 

It is hoped that this change will positively impact these producers incentivising them to “invest in new products, develop traditional skills and attract tourism”. Producers will be able to use the official protected geographical indication symbol, ensuring visibility of the product’s origin and production technique and providing reassurance to consumers that the products they are buying are genuine. Importantly, it will also enable producers to take action against the production or marketing of products using the GI unlawfully.

The registration process

Producer groups will be able to submit applications for GIs for craft and industrial products online, through the GIportal. The applications will be initially examined and published nationally in an EU member state designated by the applicant. If there are no objections or oppositions, the application will proceed to a second stage where it is examined and published by the EUIPO. If the application again does not receive any objections or oppositions, it will proceed to registration. 

Conclusion

While 2025 has not brought major changes to trade mark examination, the 2024 updates continue to shape practice in meaningful ways. From digital evidence and procedural efficiency to the classification of virtual goods and NFTs, the guidelines reflect a modernised approach to trade mark law that are to be welcomed by trade mark owners and practitioners alike.