Evidence of acquired distinctiveness: stages and deadlines

When a mark lacks inherent distinctive character, the applicant can still register it by proving acquired distinctiveness through use. The office weighs sales figures, advertising reach, market share and consumer recognition against a fixed response window stated in the refusal notice. Missing that window usually closes the option inside the same application, and the next move becomes an appeal rather than a second attempt at the same file.

What changes once the refusal lands

A provisional refusal for lack of distinctive character starts a clock the applicant did not choose. The deadline is set out in the notice itself and runs from the date of notification, not from the date the applicant happens to read it. Similar pressure appears elsewhere in IP enforcement: A rival launches an obvious workaround patent when the original filing sits idle too long. In both settings, delay turns a fixable problem into a closed door.

Before the deadline, the refusal is a question the applicant can still answer. After it, the question is closed for that application, and reopening it means starting a new procedural track rather than adding a late document to the old one.

Stages, in order

The route from objection to registration follows a fixed sequence. Working through it out of order rarely saves time, because the office reads the file in the sequence it was built, not in the sequence the applicant would prefer.

Turning the map into action means moving through the following steps without skipping any of them.

1. Read the refusal notice in full; the trade mark attorney confirms which goods or services the objection actually covers.
2. Map the territory and the audience the office is testing; marketing pulls sales and distribution data for exactly that scope.
3. Gather direct evidence first: turnover, market share, advertising spend and years on the market, dated and broken down by territory.
4. Add indirect evidence where direct figures are thin, such as a consumer survey or a trade association statement, commissioned by the applicant.
5. Keep the file current as each new sales period closes; the discipline resembles a Change control procedure built for a running contract.
6. File the response before the deadline stated in the notice; the attorney submits translated exhibits where the office requires a translation.

The habit of dating and sourcing every record travels across fields. Reserve attestations for tokenised assets follow the same logic; see Reserve evidence and attestation: documents to prepare for a comparable list built for a different asset class. The underlying rule is the same in both settings: keep the source document, not only the summary figure drawn from it.

Who decides

The first read is done by an examiner at the office where the application was filed. A refusal on this ground can be challenged before that office's internal appeal body, and beyond that stage the matter can reach a court that reviews the office's decisions. Each stage has its own deadline, printed on the decision that closes the stage before it, and the deadline is calculated from notification rather than from the applicant's own timetable.

Forks that change the route

If the descriptive term is only a problem in one language or one member state, the evidence should focus on that audience, not on the whole territory covered by the application.

If sales data is thin but recognition is strong in a specific market, weight the survey over the invoices; examiners read the volume of proof differently from its shape.

If the response deadline has already passed, the file moves to appeal, not to a fresh round of evidence gathering under the same application number.

Limits of this page

This page maps stages and deadlines; it does not calculate how much evidence a specific mark needs, or what a survey should cost to commission. Some files raise a second question once the trade mark point is settled: what can actually be established about an asset connected to the same dispute. Where that asset sits in an offshore structure, see Asset in British Virgin Islands in detail for the shape of that separate, factual exercise.

Related reading

This fork sits next to another timing-sensitive step in the same registration process; see Coexistence negotiation: stages and deadlines for what happens when two similar marks are allowed to sit side by side instead of one being refused outright.

FAQ

How long does evidence of acquired distinctiveness take in practice?

The office sets the response deadline in the refusal notice itself, and the applicant controls how quickly the file is assembled before that date. A file covering several territories and several languages takes longer to build than a single-market case, but the office does not publish a standard duration for either.

Which documents are needed to start?

Start with sales and distribution figures broken down by territory and year, dated advertising spend, and any market survey already on file. Sworn declarations from trade bodies or long-standing distributors add weight once the direct figures are already in place.

What happens if the other side does not respond?

In invalidity or cancellation proceedings, a challenger who stays silent after the evidence is filed leaves the office or tribunal to decide on the record as it stands. Silence is not a concession, but an unanswered file usually decides in favour of the side that built it.

Reviewed

Reviewed 3 March 2025. This page describes office procedure and the order of its stages; it does not cite specific statutory provisions, because examination practice is set out in each office's own guidelines and updates on its own timetable, separately from the underlying legislation.

— Ruta Kavaliauskaite, AURELIS