Adding PRO, SERVICES or MAISON Won't Save Your Trademark in Europe

IMPACT becomes IMPACT PRO. JAVA becomes JAVA SERVICES. KOALA becomes MAISON KOALA. In each case the applicant added one weak word to an existing mark and hoped it was enough. In each case the INPI found a likelihood of confusion and refused the application. Opposition decisions from the French PTO (INPI) and the EUIPO tell a consistent story: adding a descriptive or laudatory term to a senior mark almost never creates the distance the applicant needed. For US counsel used to arguing that “additional matter” distinguishes marks before the TTAB, the European result is blunter — and the reasoning is worth understanding before you file.

The governing idea: the shared distinctive element dominates

European likelihood of confusion turns on the overall impression each mark leaves, weighted by its distinctive and dominant elements. That is not far from the DuPont-style analysis a US practitioner knows, but the emphasis is sharper. When a junior mark swallows a senior mark whole and adds a weak word, the office treats the swallowed part as the dominant element and the addition as essentially neutralized.

Distinctiveness in Europe, as in the US, is assessed against the goods and services. The same word can be arbitrary for one product and descriptive for another: APPLE, arbitrary for computers, is descriptive for cider. So the question is never “is PRO a real word?” but “what does PRO tell the consumer about these goods?” The answer is usually “that they are professional-grade,” which is information about the product, not its source. See our glossary entry on distinctive character and the pillar on absolute grounds of refusal.

PRO: professional-grade, source-blind

The EU General Court set the marker in ECO PRO (25 April 2013, T-145/12): PRO is non-distinctive because the construction is “usual in advertising language.” The INPI applies it relentlessly. In IMPACT / IMPACT PRO (INPI, 9 May 2016, OP 15-5692) and BEGA / BEGA PRO (INPI, 25 April 2019, OP 18-4515), the shared opening element carried the marks and PRO was found “weakly distinctive” because it may designate the goods’ intended purpose: a professional public.

Point of attention

PRO is treated as weak not only for goods aimed at professionals, but for any product whose “professional” quality can be touted. The word rarely adds anything a European examiner will credit as source-identifying.

CONSEIL and SERVICES: naming the offering is not branding it

CONSEIL (“advice/consulting”) and SERVICES describe the nature of the offering, so they add nothing. In NATIXIS / NAXIS AUDIT EXPERTISE COMPTABLE CONSEIL (INPI, 12 January 2018, OP 17-3351), the office swept aside AUDIT, EXPERTISE, COMPTABLE and CONSEIL as descriptive of accounting services and found NAXIS dominant and close to NATIXIS. SERVICES fares no better: in JAVA / JAVA SERVICES (INPI, 16 January 2020, OP 19-3601), the INPI called the added word “manifestly devoid of any distinctive character” because it refers directly to the services at issue. The shared JAVA decided the case.

MAISON: the “artisanal” flourish that fools filers

MAISON — evoking a “house” or artisanal origin — is a favorite of brand designers and a trap. In KOALA / MAISON KOALA (INPI, 25 August 2021, OP 20-4108), the office held that “taking account of the distinctive and dominant elements tempers” the differences: KOALA, the only word in the earlier mark, was fully distinctive for the goods, and MAISON was commonly used in trade to denote a commercial establishment. In KISSA / MAISON KISSATEN (INPI, 10 December 2024, OP 24-1647) MAISON was again “non-distinctive because commonly used in the commercial sector.”

The pattern — read honestly

Across the many decisions reviewed for this article — involving MAISON, PRO, CONSEIL and SERVICES — the offices found the signs similar in the overwhelming majority of cases. That is an observation about the decisions reviewed, not a court-published success rate, and the point is not a ratio but its consistency: across four different weak words, different sectors and many years, the added term almost never did the distinguishing work. The office’s exact label varied — “manifestly devoid,” “devoid,” “not distinctive,” “weakly distinctive” — but the result did not. What decided each case was whether the added word was weak relative to the goods, and these four always were.

The exception proves the rule

The exceptions share a feature: the “added” element was itself genuinely distinctive. The clearest illustration comes from the sibling greenwashing line of cases — in NUTRIBIO / KRISTEA NUTRIBIO (INPI, 20 June 2025, OP 24-4144) the opposition failed, not because of the descriptive slogan the junior mark also carried, but because KRISTEA, an invented word placed first, did the differentiating on its own. A neologism differentiates; a generic modifier does not.

Practical takeaway

If your European brand strategy is “[senior-style root] + [reassuring generic word],” expect an opposition and expect to lose it. Change the distinctive element itself, or build an arbitrary sign with no borrowed root. Then confirm the ground is clear — see choosing a trademark and run a proper clearance search against the bare root, not just your exact mark.

For US counsel specifically

Two differences are worth flagging. First, there is no European equivalent of a US disclaimer practice that lets you register with the generic portion carved out — in an opposition, the weak word is simply discounted in the confusion analysis, and you get no credit for it. Second, the European “overall impression” test is less forgiving of “additional matter” arguments than TTAB practice can be: swallowing the senior mark whole is close to fatal, whatever you append. The likelihood-of-confusion and similarity-of-signs analyses reward genuine distance, not decoration.

Key takeaways

• Distinctiveness is judged against the goods; PRO, SERVICES, CONSEIL and MAISON are weak wherever they describe or laud the product.
• Swallowing a senior mark whole and adding a weak word is close to fatal in a European opposition.
• In the decisions reviewed, the signs were found similar in the overwhelming majority of cases — consistently across words, sectors and years.
• Real distance comes only from a genuinely distinctive element: a coined word, an arbitrary term.

Applicable law

Art. L. 713-3 of the French Intellectual Property Code prohibits use in trade of a sign similar to a registered mark for identical or similar goods “where there exists a likelihood of confusion on the part of the public, including the likelihood of association.” The global-appreciation test derives from CJEU, 22/06/1999, C-342/97, Lloyd Schuhfabrik.

Decisions cited

French decisions are searchable by number on Pappers Justice.