Evidence of acquired distinctiveness: what the decision maker looks at
Evidence of acquired distinctiveness shows that a sign, once merely descriptive, is now recognised by the relevant public as pointing to one commercial origin. The decision maker weighs the file as a whole: duration and intensity of use, market share, advertising spend, geographic spread and direct statements from consumers or trade circles. No single document decides the outcome.
What changes once the file is submitted
Filing evidence changes the burden inside the file. Before submission, the office may refuse the mark on descriptiveness alone. After a properly built file, the examiner has to engage with the substance of the evidence, not just the wording of the sign.
Once the file is filed and the office has started to examine it, pulling individual exhibits back out is not possible: the file stands as filed. The same logic of an irreversible step governs Opt-out and withdrawal of opt-out in patent proceedings, where a notice locks the choice once it is lodged.
What to do
- Counsel drafts the evidence plan and lists the years and markets the claim must cover.
- The marketing team supplies turnover, market share and advertising spend, broken down by year and channel.
- An independent survey provider runs a consumer recognition survey, where a survey is used at all.
- Trade associations, distributors or retailers supply signed statements on how the market perceives the sign.
- Counsel indexes the file into one bundle and checks every exhibit against the original plan.
- The filing team submits the bundle to the decision maker before the set deadline.
If part of the file rests on licence agreements that changed during the claimed period, track each amendment under a Change control procedure, so the decision maker can follow the change history without gaps.
Who decides
The first decision maker is the examiner at the trade mark office where the application or the registration sits. On opposition or invalidity, the file moves to the opposition or cancellation division. An appeal goes to the Boards of Appeal and, beyond that, to the General Court and the Court of Justice for EU marks, or to the competent national court for national marks.
| Stage | Decision maker | Typical rhythm |
|---|---|---|
| Examination | Examiner at the trade mark office | Deadline set in the office's letter, one extension usually possible |
| Opposition or invalidity | Opposition or cancellation division | Written round of submissions, then a decision on the file |
| Appeal | Board of Appeal | Written appeal, an oral hearing only if one side requests it |
| Further appeal | General Court, Court of Justice, or the competent national court | Separate court calendar, outside the office's control |
Forks
If the sign is descriptive only in one language of the Union, the evidence has to cover recognition among the public that speaks that language, not the whole Union at once.
If the applicant already holds a national registration for the same sign, the file can point to that registration as one strand of proof. It does not replace fresh evidence of recognition on its own.
If the mark is also used in a token issuance, and part of the file has to show recognition among token holders, keep the trade mark owner and the operational role apart. See What issuer token issuance means in a file for how that role is set out in a comparable file.
What this page does not cover
This page does not set the size of the evidence file a given sign needs, and it does not price the work of building one. Firms comparing this decision point with a related valuation question can see how that question is mapped in Asset report before a licence is signed: who decides. It also does not cover a dispute already before a court, which runs to its own timetable once it starts.
Verified
Reviewed on 4 March 2025. Primary sources: the published examination and evidence guidelines of the relevant trade mark office, and that office's own procedural rules for opposition, cancellation and appeal proceedings, as in force on the review date above.
Related publications
For a neighbouring procedure with a similar decision-maker logic, see Coexistence negotiation: what the decision maker looks at.
Frequently asked questions
How long does evidence of acquired distinctiveness take in practice?
There is no fixed calendar. Timing depends on the stage reached, the number of rounds of evidence exchange, and whether the decision maker asks for clarification. Each deadline is set case by case, in the office's or court's own letter.
Which documents are needed to start?
A plan setting out the claimed period and markets, turnover and market-share data for that period, advertising figures by year and channel, and any survey or third-party statement the applicant intends to rely on. The plan comes first; the exhibits are gathered against it.
What happens if the other side does not respond?
In opposition or cancellation proceedings, silence from the other side does not stop the process. The decision maker still reviews the evidence on file and issues a decision on that basis, without waiting indefinitely for a reply that never comes.
If a validation deadline in a related matter was already missed, start here: When a validation deadline was missed explained. Otherwise, send the draft evidence plan across and we will flag gaps before it reaches the decision maker.