The European Trademark and Design Network (“ETMDN”) was established in 2011 as a collaboration between trademark user associations and European national and regional trademark offices (including OHIM), with the goal of providing greater clarity, harmonization, and legal certainty for trademark offices and applicants alike. In October 2015, the ETMDN published a further installment in its series of communications aimed at achieving convergence in trademark examination practices, namely, the Common Communication on the Common Practice of Distinctiveness – Figurative Marks Containing Descriptive / Non-Distinctive Words (“Common Practice”).
The purpose of the Common Practice is to provide predictability in determining whether a word mark that is otherwise descriptive or non-distinctive becomes distinctive with the addition of figurative or design elements, thus avoiding the “devoid of distinctive character” and descriptive grounds for refusal under European Union trademark law.
The Common Practice has now been implemented by OHIM, many national trademark offices of the EU (but not by Italy, Finland, and Poland), as well as Norway, and should be taken into account in the selection and examination of trademarks.
Overview of the Common Practice
The Common Practice provides detailed analyses of a number of criteria to be considered in evaluating the distinctiveness of a figurative mark containing descriptive or non-distinctive words, or words that are presented in a stylized manner. These criteria are loosely grouped under the Common Practice as follows:
(i) With respect to word elements: typeface and font, combination with color, combination with punctuation marks and other symbols, and position of word elements (sideways, upside-down, etc.).
(ii) With respect to figurative elements: use of geometric shapes, the position, proportion, or 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 or services, and whether the figurative element is commonly used in the trade in relation to the goods or services.
(iii) With respect to both the word and figurative elements: how combinations of the foregoing criteria affect distinctiveness.
The Common Practice provides detailed examples of each criterion.
In connection with word elements, additions of colors, punctuation marks, and typefaces are governed generally by the principle that additions that are basic, standard, or common in trade do not render the overall mark distinctive. On the other hand, to the extent such additional elements are likely to create a “lasting impression,” are unusual, distract the consumer’s attention from the descriptive meaning of the word element, or can be “easily remembered” by the consumer, they should be deemed sufficient to render the overall mark distinctive.
For example, with respect to the positioning of word elements, the Common Practice states that an arrangement of words vertically, upside-down, or in one or more lines is generally not distinctive. However, word positioning can lend distinctive character to a mark where the arrangement of the words is such that the average consumer “focuses on it rather than immediately perceiving the descriptive message.” Two of the examples illustrating this point are set forth below:
The Common Practice provides the following guidelines for figurative elements:
- Non-distinctive verbal elements that are combined with basic geometric shapes (e.g., points, lines, circles, squares, hexagons, etc.) are unlikely to be accepted, particularly if the shapes constitute a border element. However, shapes offer distinctiveness to the composite mark when their presentation, configuration, or combination with other elements creates a “global impression which is sufficiently distinctive.”
- If the position and size of the figurative element renders it clearly recognizable, it can render the composite mark distinctive. But figurative elements that are so small as to be difficult to see, and which accompany a much larger, descriptive word element, are insufficient.
- Figurative elements that are a true-to-life or common representation of the goods or services at issue, or which directly link to characteristics of the goods or services, do not generally add distinctiveness unless the figurative element is sufficiently stylized. Likewise, figurative elements that are commonly or customarily used in trade in relation to the goods or services do not generally add distinctiveness to the mark as a whole. For example, the “scales of justice” is a figure customarily recognized to denote legal services and is generally non-distinctive for such services.
Usually, figurative and word elements that are individually devoid of distinctive character do not create a distinctive mark when combined. However, when the combination results in an “overall impression which is sufficiently far removed from the descriptive/non-distinctive message conveyed by the word element,” the Common Practice makes clear that this combination may be deemed distinctive.
The Common Practice explicitly excludes from its purview language issues, interpretation of disclaimers, and use of the trademark (including acquired distinctiveness and consideration of how the mark is used in trade).
The Common Practice has now gone into effect for each of the implementing offices. Each office determines whether the Common Practice will apply to examination of applications filed after the implementation date (such as in the UK), or whether it will also apply to those applications that were pending on the implementation date (for example, in the OHIM). Further, some offices such as the OHIM will apply the Common Practice to invalidity proceedings against marks that were examined under previous practices.
Accordingly, owners of word marks that are arguably close to the distinctive/non-distinctive line may wish to review their European portfolio to ensure that their marks that include figurative or design elements would pass muster under the newly-implemented Common Practice. If not, ongoing marketing efforts to promote and ensure the acquired distinctiveness of key marks may be prudent.