When trade mark components have little or no distinctiveness

The new year has started preparing the ground for the implementation of the next chapter of the OHIM Convergence Programme, a laudatory example of collaboration and dialogue within the trade mark offices in Europe.

Back in 2011 OHIM, the national offices and user associations agreed on the shared purpose to harmonize their practices and built up a collaborative and interoperable trade mark network with the vision 'To establish and communicate clarity, legal certainty, quality and usability for both applicant and office'. As a result, the European Trade Mark and Design Network was born as part of the OHIM Strategic Plan 2011-2015.

Within the framework of the Convergence Programme, both trade mark and design matters have been addressed in the realization of common practices aimed at overcoming the controversial issues that hampered a consistent protection throughout Europe. These prominent aspects of trade mark and design have been conceived in the following Common Practices which are to be afterwards developed in their related Common Communications:

Trade marks:

• CP 1. Harmonisation of Classification
• CP 2. Convergence of Class Headings
• CP 3. Absolute Grounds – Figurative Marks
• CP 4. Scope of Protection Black and White Marks
• CP 5. Relative Grounds – Likelihood of Confusion

Designs:

• CP 6. Convergence on Graphic Representations of Designs
• CP 7. Harmonization of Product Indications

After last year's implementation of the guidelines on black and white marks, reported by the IPKat here, the time has come for trade mark users, practitioners and examiners to shed light on the impact of non-distinctive or weak components in the assessment of the likelihood of confusion in relative grounds cases.

To this end, as announced in OHIM’s Alicante News, the fifth Common Communication covering that aspect of distinctiveness' analysis and interpretation was published on 2 October 2014 by 25 offices, namely the OHIM, all the EU trade mark offices, except the Italian and the Finnish ones, and the three non-EU offices of Iceland, Norway and Turkey.

The fifth Common Communication focuses on the premises that, in the examination of relative grounds for refusals, the earlier and the later marks cover identical goods and/or services and coincide in a component that has no or a weak distinctiveness. Moreover, what falls outside the scope of this common practice can be summarised in the four bullet points below:

• The assessment of enhanced distinctiveness and/or acquired distinctiveness through use and/or reputation, as it is assumed that from the circumstances of the case none of the marks are reputed or have enhanced distinctiveness acquired through use;

• Agreement on the other factors that are considered when assessing the likelihood of confusion;

• Agreement on the interdependencies between the assessment of distinctiveness and all the other factors that are considered when assessing the likelihood of confusion;

• Language issues, in that marks containing word elements with no or low distinctiveness in English will be considered to have this weakness in all languages and are understood by the national offices.

Likewise, the Common Communication sets out four objectives from which some general principles can be extracted in the following terms:

1. Define what marks are subject to assessment of distinctiveness: the earlier mark (and/or parts thereof) and/or the later mark (and/or parts thereof);
2. Determine the criteria to assess the distinctiveness of the mark (and/or parts thereof);
3. Determine the impact on likelihood of confusion (LOC) when the common components have a low degree of distinctiveness;
4. Determine the impact on LOC when the common components have no distinctiveness.

OBJECTIVE 1

In the analysis of the likelihood of confusion, the distinctiveness of the earlier mark as a whole is assessed without contesting the mark's validity. This circumstance is in line with the judgment of the Court of Justice of the European Union (CJEU) in Case C-196/11P F1-LIVE, in which the CJEU held that a certain degree of distinctiveness must be acknowledged for the earlier trade mark on which an opposition is based. In contrast, both the earlier and the later marks' components are considered, giving priority to their common elements.

OBJECTIVE 2

In regard to the criteria applied to assess the distinctiveness of a mark, the answer is the overall assessment of its essential function of origin identifier in relation to the principle of speciality: the less capable a mark is of identifying the goods and services for which it has been registered, as coming from one undertaking and to distinguish them from those of another undertaking, the narrower its scope of protection should be, taking into account its non-distinctive or weak components. Indeed, such criteria to determine the minimum distinctiveness of a mark are used both in absolute and relative grounds proceedings with the difference that in the latter instances they are also applied to measure the degree of distinctiveness.

OBJECTIVE 3

The starting assumption is that all the factors involved in the global appreciation of the likelihood of confusion are deemed not to affect the related outcome. Thus, when conflicting marks share a component with low distinctiveness the assessment of the likelihood of confusion focuses on the similarities/differences and the distinctiveness of the non-common elements.

In principle, the coincidence in a low distinctive element will not normally lead own its own to the likelihood of confusion unless one of the following conditions occurs:

• The other elements have a lower or the same low distinctiveness or they have an 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 4

In cases where the conflicting marks share an element with no distinctiveness, the preliminary assumption and the assessment of the likelihood of confusion are the same as those reported above for trade marks with low distinctive elements.

This time it is agreed that the coincidence only in the non-distinctive component does not lead to the likelihood of confusion. It is solely when the marks' other figurative and/or elements are similar that there will be a likelihood of confusion if the overall impression produced by the marks is highly similar or identical.

CONCLUSIONS

Although the likelihood of confusion is to be assessed on a case-by-case basis and appreciated globally, taking into account all factors relevant to the circumstances of the case, as point out in the 11^th recital of Trade Mark Directive 2008/95 and in the case-law of the European Supreme Judicatures (Cases C-251/95 Sabel and C-342/97 Lloyd Schuhfabrik Meyer), the fifth Common Communication only entails the importance of trade marks' non-distinctive or weak components.

If even cats can converge, trade mark granting
authorities should be able to manage it too

When bringing or defending a case involving relative grounds for refusal, the overall impression given by the conflicting marks is affected in particular by their distinctive and dominant elements, playing a fundamental role in the 'global appreciation of the visual, aural or conceptual similarity' between the marks, as the CJEU held in Sabel. Consequently, establishing that one or more shared components of the conflicting marks have no or weak distinctive character is a fundamental part of the overall assessment of the likelihood of confusion. It follows that practical relevance should be attributed to the way in which the absence or the low distinctiveness of trade marks' components is substantiated before the offices, in particular with special attention to the types of proofs which right holders are asked to submit for the purposes of denying the components' distinctive character.

As to when the Common Practice on Relative Grounds – Likelihood of Confusion will be operational, it was apparently deemed to be effective within three months of the date of publication of the common communication document (which after a brief calculation the related deadline schedule should be on 2 January 2015), so we will stay tuned and see what practice the offices undertake.