So descriptive!

 

Community trademark applicants, if you (still) were not aware of the, let’s say, new approach adopted by the Community Trademark Office in examining descriptive marks, take the time to read this.

There has been, and this is true, a period in which, in case of a very descriptive mark, the way to, despite the weak character of the mark, obtaining a registration was to combine the (descriptive) word with a logo or a graphical rendition or even just a colored wording.

Some decisions made during the last months (couple of years, or more actually) have already shown that there is a stricter approach in examining the marks (which, to say the truth, is very welcome: an office should only grant marks capable of performing their primary function): Case T-553/14, Wm. Wrigley Jr. Company [EXTRA logo],  Case R 753/2015-1 Simplepay Pty Ltd [SIMPLE PAY logo], Case R 554/2015-4,, Lidl Stiftung & Co. KG, [SIMPLY SUMPTUOUS], Case R 870/2015-4,  EHI Retail Institute GmbH [SELF CHECKOUT], etc.

We also performed a search among the recently CTM refused marks. Besides some word marks refused because of their descriptive or generic nature, there were some other comprising word elements and figurative elements, all refused: CRISPY BALANCE device, SONNEN BATTERIE figurative in colors, JEDE FLASCHE AZAHLT! Figurative in color, etc. Consequently, it is true that the examination is stricter.

Finally if the study of the EU Jurisprudence is not enough to realize that the wind has definitely change (for the CTM filing but also for the National Ones), users should also take into account the recent Common Communication on the Common Practice of Relative Grounds of Refusal – Likelihood of Confusion (Impact of non-distinctive/weak components): [https://oami.europa.eu/tunnel-web/secure/webdav/guest/document_library/contentPdfs/about_ohim/who_we_are/common_communication/common_communication_cp5_en.pdf].  Basically the IP Office of the EU have agreed on a Common Practice as to when a figurative mark, containing only descriptive/non-distinctive words should pass the absolute grounds examination on the basis that the figurative element gives the mark sufficient distinctive character (the communication is very useful since contains examples).

If are deciding whether or not filing a mark and you have some doubts that it might be descriptive, ask your IP expert for advice!

 

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