In 2011 the EUIPO launched the “Convergence Programme” in order to improve the alignment of national and EU trade mark systems and to assist with the improvement of practices. The programme was based on regular exchange of information and discussion of issues among the EUIPO, national offices and user associations.
Working groups are established to investigate specific issues in order to produce recommendations for common practices in relation to the examination of trade marks. The objective is to increase transparency, legal certainty and predictability for examiners and users alike.
The EUIPO then publishes “Common Practice” notices setting out these recommendations.
Previous common practice notices have dealt with issues including: the harmonisation of classification of goods and services; the scope of protection of trade marks exclusively in black and white and/or shades of grey; absolute grounds for refusal for figurative marks with purely descriptive words or expressions; and the impact of non-distinctive/weak components when assessing the likelihood of confusion between marks (in the context of relative grounds of refusal).
On 1 April 2020 the EUIPO published CP9 Common Practice: “Distinctiveness of three-dimensional marks (shape marks) containing verbal and/or figurative elements when the shape is not distinctive in itself”.
This sets out a two-step examination process for assessing the distinctive character of such marks:
1. To identify all the elements of the sign (the shape itself plus any words, logos, colours) and assess the inherent distinctiveness of each of these individually; and
2. To assess the distinctiveness of the sign as a whole based on its overall impression in relation to the specified goods/services, also taking into account consumer perception which can be influenced by specific market realities.
So far so unsurprising, but we are interested by the stepwise analysis allowing for the subjective consumer perception. We are given some further points for consideration:
- If a shape mark contains another element (a word or a logo) that is distinctive in its own right and can be clearly identified, this will generally be sufficient for the mark as a whole to be considered inherently distinctive. The size and proportion of the verbal/figurative elements, their contrast with respect to the shape, and their actual position on the shape, are all factors which may affect the perception of the whole mark when assessing its distinctiveness. Specific market realities must also be taken into account: for example, a small word on the side of a large item such as refrigerator may not be spotted, but even a small verbal element may be identified as a distinctive element where the goods themselves are small. An example is a small word ( “GOR” on the illustration) on a watch face:
- A combination of elements which are all non-distinctive will not usually result in a distinctive mark overall, unless the combination manages to create a distinctive overall impression, an example being a pattern created from the word CHOCOLATE on a tablet of chocolate:
- Adding a single colour element to a non-distinctive shape mark is extremely unlikely to render the mark as a whole distinctive. However, adding an arrangement of colours which is uncommon for the goods and creates an overall memorable impression can render the mark as a whole distinctive.
This Common Practice will take effect at the EUIPO from 1 July 2020 (3 months from the date of publication) and will be applicable in all pending and future proceedings.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.