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

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 Convergence Programme

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 Convergence Programme

Results of survey sent to Working Group 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 CP 3 Absolute grounds – Distinctiveness of figurative marks containing descriptive/non-distinctive words

Classes Class 30 Class Class 28 CP 3 Absolute grounds – Distinctiveness of figurative marks containing descriptive/non-distinctive words

Class 2 Class 36 Class 28 CP 3 Absolute grounds – Distinctiveness of figurative marks containing descriptive/non-distinctive words

Various classes Classes Class 3 Class 28 CP 3 Absolute grounds – Distinctiveness of figurative marks containing descriptive/non-distinctive words

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

CP 5 Relative grounds - Likelihood of Confusion (Impact of non-distinctive/weak components) 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” CP 5 Relative grounds - Likelihood of Confusion (Impact of non-distinctive/weak components) Objective 1 Define what marks are subject to assessment of distinctiveness The 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

CP 5 Relative grounds - Likelihood of Confusion (Impact of non-distinctive/weak components) 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 1 Define what marks are subject to assessment of distinctiveness The 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)

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

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

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

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

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

THANK YOU Patrick Boyle - 9 June 2015