Europeantmdn publishes common practice on distinctiveness of figurative marks containing descriptive/non-distinctive words
The European Trademark and Design Network (Europeantmdn) has published a common approach to assessing whether a trademark application consisting of stylised descriptive and/or non-distinctive words alone, or with a figurative element, should be considered capable of registration. The common practice will be adopted by most European IP offices, including by the UK Intellectual Property Office (UK IPO) from October 2 2015 and by the Office for Harmonisation in the Internal Market (OHIM) from February 2 2016.
Europeantmdn is a collaboration between the national and regional IP offices of Europe, facilitated through OHIM. One of the stated aims of Europeantmdn is to agree on common practices in respect of applications for registered trademarks and designs to ensure legal certainty and consistency across Europe.
On October 2 2015, Europeantmdn published a "Common Communication on the Common Practice of Distinctiveness – Figurative Marks containing descriptive/non-distinctive words". It sets out common practice agreed by Europeantmdn in respect of when a figurative mark which contains purely descriptive or non-distinctive words should be deemed capable of registration, so as to overcome the “devoid of distinctive character” and “descriptiveness” absolute grounds for the refusal of registration as set out in Articles 3(1)(b) and (c) of the Trademarks Directive (2008/95/EC), respectively. Outside of the scope of the common practice are language issues, the interpretation of disclaimers and questions around acquired distinctiveness.
The common practice provides guidance on the assessment of the distinctiveness of a figurative mark which consists of stylised descriptive and/or non-distinctive word elements, as well as the impact of any additional figurative elements included as part of a mark. It provides visual examples which are repeated here. In respect of figurative marks consisting of stylised words alone, the common practice takes the following positions:
1. Typeface and font - objections on the grounds of descriptiveness and/or non-distinctiveness cannot be overcome by presenting the words as a figurative mark in a basic typeface, including the use of handwriting-style fonts, or effects such as italics or bold text. For example, the following are not capable of registration for sardines in Class 29:
If, however, the typeface incorporates graphic designs, and those elements have sufficient impact on the mark, then the mark may be capable of registration.
2. Colour - merely presenting the descriptive and/or non-distinctive words in colour, or use of a coloured background, is not sufficient. The common practice does not rule out that a combination of colours could render a mark distinctive.
3. Punctuation and other symbols - again, the general principle is that the mere addition of punctuation or other symbols is not sufficient to render a mark distinctive.
4. Positioning - unusual positioning of the words will not suffice to render a mark distinctive unless the average consumer would focus on the positioning instead of immediately perceiving the descriptive message. Europeantmdn provides the following examples, only the second of which would be capable of registration in Class 30 for coffee:
When combining word and figurative elements, the general principle that the common practice applies is that, if both elements are individually devoid of distinctive character, then a combination of the two will not create a distinctive mark. If, however, the combination creates an overall impression which is "sufficiently far removed" from that of the descriptive and/or non-distinctive words in the mark, then the mark may be capable of registration. As regards figurative elements added to a mark that otherwise consists solely of descriptive and/or non-distinctive words, the common practice sets out the following principles:
1. Simple geometric shapes - enclosing the words in a simple shape is not sufficient to render a mark distinctive. It is possible that the addition of geometric shape could overcome the absolute grounds of refusal if the overall impression of the mark is distinctive. Europeantmdn provides the following examples in respect of an application in Class 30 for coffee, the second of which would be capable of registration:
2. Position and proportion - a figurative element which is distinctive in its own right will render a composite mark distinctive as long as the positioning and proportion in respect of the descriptive and/or non-distinctive words means the figurative element is clearly recognisable.
3. Figurative elements linked with the goods or services for which registration is sought. If a figurative element is a true representation of the goods or services or does not significantly depart from that representation, then the addition of the figurative element will not render the mark capable of registration. Europeantmdn provides the following examples, only the second of which would be capable of registration in Class 29 for sardines:
4. Figurative elements customary to trade - placing descriptive and/or non-distinctive words in a product tag-shape or similar would not be sufficient to render the mark capable of registration.
All EU member states, save for Finland, Italy and Poland, have agreed to implement the common practice, although the date from which the common practice will be applied varies from member state to member state, as does the applications and invalidity proceedings to which the common practice will apply. The communication includes a table summarising the position for each office. In the United Kingdom, it will apply to any application for registration or any application for invalidity proceedings filed after the implementation date of October 2 2015. It will not apply to applications or invalidity proceedings pending at that date.
Given that some offices, including the UK IPO and OHIM, will apply the common practice to invalidity proceedings filed after the implementation date for all existing registrations, rather than just those examined in accordance with the common practice, proprietors may wish to consider whether any of their existing trademark portfolio could now be at risk. This is especially the case in light of the varying implementation across the European offices.
The common practice is not intended to affect the scope of protection for granted rights. The assessment of the scope of protection as regards weak or descriptive and/or non-distinctive elements has been covered by Europeantmdn in a separate statement of common practice (Common Practice 5).
Leigh Smith, Clifford Chance LLP, London
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