cp3: absolute grounds – distinctiveness of figurative marks containing descriptive/non-distinctive...

CP3: Absolute grounds – Distinctiveness of figurative marks containing descriptive/non-distinctive words

CP5: Relative Grounds – Likelihood of Confusion (Impact of non-distinctive/weak components)

Patrick Boyle - 9 June 2015

European Trade Mark and Design Network Convergence Programme

http://www.aipla.org/


Convergence Programme

• OHIM Strategic Plan

• Creation of European Trade Mark and Design Network (national and regional IP offices, User and other IP Organizations)

• Creation of IP tools shared by participatng IP Offices (Cooperation Fund)

• Foster harmonization of practices (Convergence Programme)

The main benefits for users are:

• Clarity and transparency: shared communication initiatives keep stakeholders informed of advancements in a timely manner, with unified information

• Quality and usability: effective and efficient access to protection offered by registration systems both at the national and EU level

• Legal certainty: increased legal certainty due to greater consistency in decisions made at national and EU level

• Time and cost savings: potential reductions in application processing times and cost savings for both IP offices and applicants


CP1 Harmonization of trade marks classification practice

CP2 Convergence of Class Headings

CP3 Absolute grounds – figurative marks

CP4 Scope of protection of black and white marks

CP5 Relative Grounds – Likelihood of Confusion (Impact of non-distinctive/weak components)

CP6 Convergence on graphic representations of Designs

CP7 Harmonization of Product Indications


Results of survey sent to Working Group DE NO UK ES HU SE IE TR

OHI

M SK AT BG LV GR

RO HR LT CH MT CZ PL BX CY PT EE SI FR DK

0%

10%

20%

30%

40%

50%

60%

70%

80%

90%

100%

Distinctive Devoid

CP 3 Absolute grounds – Distinctiveness of figurative marks containing descriptive/non-distinctive words

“Establish a common practice in relation to when a figurative mark, containing purely descriptive /non- distinctive words, passes the absolute grounds examination because the figurative element renders sufficient distinctive character”

• With respect to the word elements in the mark: → Typeface and font → Combination with colour → Combination with punctuation marks and other symbols → Position of the word elements (sideways, upside-down, etc.)

• With respect to the figurative elements in the mark: → Use of simple geometric shapes → The position and proportion (size) of the figurative element in relation to the word element → Whether the figurative element is a representation of, or has a direct link with, the goods and/or services → Whether the figurative element is commonly used in trade in relation to the goods and/or services applied for

• With respect to both the word and figurative elements in the mark:→ How combinations of the criteria affect distinctiveness


Classes 9 12 39

Class 30

Class 16 17 42

Class 28


Class 2

Class 2

Class 36

Class 28


Various classes

Classes 16 28

Class 3

Class 28


Classes 18 25Mo Industries LLC (General Court T-203/14) 21 May 2015

• Cursive script remains largely unremarkable

• Typeface used , although stylised, cannot divert the consumer’s attention from the clear message conveyed by ‘splendid’

• Dot does not alter overall impression


CP 5 Relative grounds - Likelihood of Confusion (Impact of non-distinctive/weak components)

1412

2

No Yes N/A

Do you have any guidelines for examiners on how to deal with non-distinctive/weak components of marks in the context of the examination of relative grounds for refusal

(Likelihood of Confusion)?

“Harmonise the practice regarding non distinctive/weak components ‐ of trade marks for the purpose of assessing likelihood of confusion, assuming that the goods and/or services are identical”


Objective 1Define what marks are subject to assessment of distinctivenessThe earlier mark and/or parts thereof?The later mark and/or parts thereof?

Objective 2 Determine the criteria to assess the distinctiveness of the mark (and/or parts thereof)

Objective 3 Determine the impact on LOC when the common components have a low degree of distinctiveness

Objective 4 Determine the impact on LOC when the common components have no distinctiveness


• The distinctiveness of the earlier mark as a whole is assessed• The distinctiveness of all elements of the earlier mark and of the later

mark is also assessed, prioritising the coinciding elements

Same criteria that are used in absolute grounds are used:

• to determine a minimum threshold of distinctiveness• to consider the varying degrees of distinctiveness

Objective 1Define what marks are subject to assessment of distinctivenessThe earlier mark and/or parts thereof?The later mark and/or parts thereof?

Objective 2 Determine the criteria to assess the distinctiveness of the mark (and/or parts thereof)


A coincidence in an element with a low degree of distinctiveness will not on its own lead to LOC

However, there may be LOC if:

• There are other elements that are of a lower (or equally low) degree of distinctiveness or are of insignificant visual impact and the overall impression of the marks is similar

OR

• The overall impression of the marks is highly similar or identical

Objective 3 Determine the impact on LOC when the common components have a low degree of distinctiveness


• A coincidence only in a non-distinctive element will not lead to LOC

BUT

• When marks also contain other figurative and/or word elements which are similar, there will be LOC, if the overall impression of the marks is highly similar or identical.

Objective 4 Determine the impact on LOC when the common components have no distinctiveness

CRE-ART PRE-ART

TRADENERGY TRACENERGY


THANK YOU

Patrick Boyle - 9 June 2015



cp3: absolute grounds – distinctiveness of figurative marks containing descriptive/non-distinctive...

Documents

figurative elements

absolute grounds examination

distinctiveness cp

punctuation marks

word elements

regional ip offices

group cp

design network national