Common Practice for Relative Grounds of Refusal
On 02 October 2014 the European Trade Mark & Design Network issued a Common Communication regarding a common practice for the impact of low- or non-distinctive elements on the assessment of the likelihood of confusion in relative grounds refusals. The Network comprises the OHIM and participating national trade mark offices (both within the EU as well as some non-EU offices). The Common Communication is a result of the Convergence Programme set up in June 2011. The first wave of convergence projects features five areas (“CP1”-“CP5”) and this Common Communication marks the completion of the fourth of these five projects (CP5 Relative Grounds - Likelihood of Confusion). A copy of the Communication may be accessed at the below web page.
The primary rationale for this particular project (“CP5”) was the view that it was un-desirable that there was division among the OHIM, the Benelux Patent Office (“BOIP”), and national offices regarding the handling of non-distinctive or weak elements of marks in relative grounds issues, given that such differences in approach led to unpredictability and legal uncertainty. The main purpose of the Communication is to outline and explain the convergence of the practice of the OHIM and the participating national trade mark offices on this issue. The implementing offices are the OHIM, the BOIP, and all EU national offices except for Finland and Italy. Three national offices outside the EU are also implementing this common practice (Iceland, Norway, and Turkey).
The general thrust of the common practice is that a common element (i.e. an element common to two composite marks) of low distinctiveness will not normally itself lead to a finding of a likelihood of confusion and, in instances where the common element is non-distinctive, the general approach is that there not be a likelihood of confusion. The Common Communication explains, however, that a finding of a likelihood of confusion is still possible under limited circumstances. So, where the common element is non-distinctive, a finding of a likelihood of confusion is still possible where the overall impression is identical or highly similar, by reason of other similarities between the marks at issue. Where the common element has low distinctive character, a finding of a likelihood of confusion may be made where (a) the overall impression is identical/highly-similar or (b) the overall impression is similar because the other elements of the marks either enjoy a lower (or equally low) level of distinctiveness with that of the common element or are of a visually insignificant nature.
The common practice is due to be implemented by 02 January 2015. In particular, the OHIM will incorporate this common practice into its CTM Opposition Guidelines (Part C, Chapter 4 – distinctiveness, and Chapter 6 - the global assessment). The common practice is welcome news for users and practitioners as being a sensible way of dealing with relative grounds disputes.