The national IP offices of the EU, together with the Community Trade Mark Office (OHIM), have adopted a new ‘Common Practice’ on relative grounds examinations.
The implementation of this Common Practice is part of a larger “Convergence Programme” aimed at ironing out practice inconsistencies across the EU.
The new Common Practice sets out four basic principles to be followed by all participating offices when assessing the likelihood of confusion between trade marks. These principles centre on the impact of non-distinctive or weak components, and can be summarised as follows:
- Marks subject to an assessment of distinctiveness
When evaluating the likelihood of confusion, the distinctiveness of the earlier mark as a whole should be assessed, and the distinctiveness of all components of the earlier mark and later mark should also be assessed.
- Criteria for assessing distinctiveness
When assessing the distinctiveness of marks in relative grounds examinations, the same criteria that are used to determine distinctiveness in absolute grounds examinations should be applied.
However, in relative grounds, these criteria should be used to determine whether a minimum threshold of distinctiveness is met and also to consider the varying degrees of distinctiveness.
- Impact of common components with low distinctiveness When marks share an element with low distinctiveness, the assessment of the likelihood of confusion should focus on the impact of the non-coinciding components on the overall impression of the marks, having regard to the similarities/differences and distinctiveness of these non-coinciding components.
On its own, a coincidence in an element with a low degree of distinctiveness should not normally lead to a likelihood of confusion finding.
However, a likelihood of confusion finding may still be reached if (a) the other components are of a lower degree of distinctiveness, (b) the other components are of insignificant visual impact and the overall impression of the marks is similar, or (c) the overall impression of the respective marks is highly similar or identical.
- Impact of common components with no distinctiveness
When marks share a component with no distinctiveness, the likelihood of confusion assessment should focus on the impact of the non-coinciding components on the overall impression of the marks, having regard to the similarities/differences and distinctiveness of the non-coinciding components.
Where only the non-distinctive components coincide, a likelihood of confusion should not be found.
A likelihood of confusion should, however, be found if (a) the marks also contain other figurative and/or word elements which are similar and (b) the overall impression of the respective marks is highly similar or identical.