New common communication on impact of non-distinctive elements in assessing likelihood of confusion

The Office for Harmonisation in the Internal Market and participating national offices have adopted the Common Communication on the Common Practice of Relative Grounds of Refusal – Likelihood of Confusion (impact of non-distinctive/weak components), outlining the new common practice concerning the impact of non-distinctive/weak components of marks when determining whether a likelihood of confusion exists.

The common practice refers exclusively to cases where the goods and/or services covered by the compared marks are identical.

The objective of the project was to:

• define what marks are subject to the assessment of distinctiveness: the earlier mark (and/or parts thereof) and/or the later mark (and/or parts thereof);
• determine the criteria for assessing whether a mark (and/or parts thereof) has distinctive character;
• determine the impact on likelihood of confusion when the common components have a low degree of distinctiveness; and
• determine the impact on likelihood of confusion when the common components have no distinctiveness.

In response to these objectives, it has been established as follows:

1. The distinctiveness of the earlier mark as a whole is assessed, taking into account that a certain degree of distinctiveness needs to be acknowledged. The distinctiveness of all components of the earlier mark and of the later mark is also assessed, while prioritising the coinciding components.
2. When assessing the distinctiveness of the marks on relative grounds, the same criteria used to determine the distinctiveness on absolute grounds apply. However, with relative grounds, these criteria are used not only to determine whether a minimum threshold of distinctiveness is met, but also to consider the varying degrees of distinctiveness.
3. When marks share an element with a low degree of distinctiveness, the assessment of the likelihood of confusion will focus on the impact of the non-coinciding components on the overall impression created by the marks.
4. The presence of an element with a low degree of distinctiveness will not normally on its own lead to a likelihood of confusion. However, there may be a likelihood of confusion if the other components have a lower (or equally low) degree of distinctiveness, or if they are of insignificant visual impact and the overall impression of the marks is similar, or if the overall impression of the marks is highly similar or identical.

The new common practice will be implemented within three months of the publication date, namely by January 2 2015.

Roxana Sarghi, PETOŠEVIC, Bucharest