As part of the Convergence Programme followed by the IP Offices of the European Union Trademark and Design Network (EUTMDN), the EUIPO published on 1 April 2020, the Common Practice CP9 on the “distinctiveness of three-dimensional marks (shape marks) containing verbal and/or figurative elements when the shape is not distinctive in itself” and the Common Practice CP10 “Criteria for assessing the disclosure of designs on the Internet”.
Both Common Practices are the result of consultations and contributions submitted by stakeholders over the last two years, as well as of the fruitful collaboration in their respective working groups, composed of experts from national and regional IP offices, in the framework of EUIPO’s European cooperation projects.
In relation to marks, a common practice (Common Practice CP9) has been agreed on the distinctiveness of three-dimensional marks (shape marks) containing word and/or figurative elements when the shape itself is non-distinctive, in order to “establish a minimum threshold for distinctiveness of shape marks when the shape itself is non-distinctive”.
The purpose of this Common Practice is to increase transparency, legal certainty and predictability for the benefit of both examiners and users alike, being the reference for Member States’ IP offices, users’ associations, applicants and their representatives.
The issue which this Common Practice seeks to address is the assessment of the overall inherent distinctiveness of three-dimensional marks (shape marks) consisting of a non-distinctive shape of the goods themselves, packaging or containers, and other elements to which the shape mark extends, within an absolute grounds examination.
The elements that may be included in the three-dimensional mark and which have been reviewed by the Common Practice in order to determine whether the three-dimensional mark is distinctive or not as a whole are the following:
(a) Verbal and figurative elements
(b) Single colour and colour combinations
(c) Combination of factors and elements
As a general rule, if a non-distinctive shape (three-dimensional mark) contains an element (verbal or figurative, single colour or combinations of colours, combination of elements) that is distinctive on its own, it will suffice to render the sign as a whole distinctive.
The difficulty lies in determining the distinctiveness of the element or set of elements included in the non-distinctive three-dimensional mark. The Common Practice also establishes some parameters for determining the distinctiveness of such elements.
Thus, as regards verbal and figurative elements, parameters such as their size and proportion, their contrast with respect to the shape, and their actual position on it must be assessed, taking into account specific market realities to which the three-dimensional mark in question belongs.
Where several factors (such as size, position or contrast) negatively affect the element from being identified as distinctive, this will lead to a non-distinctive overall impression of the sign.
As regards colours, in assessing the distinctive character of a colour, regard must be had to the general interest in not unduly restricting the availability of colours for the other traders who offer for sale goods or services of the same type as those in respect of which registration is sought (cf. 06/05/2003, C-104/01, Libertel EU:C:2003:244, §60, and 24/06/2004, C-49/02, Blau/Gelb EU:C:2004:384, §41.)
As a general rule, a single colour will in principle not be distinctive for any goods and services except under exceptional circumstances, so that the mere fact of adding a single colour to a three-dimensional mark would not render the sign inherently distinctive.
However, it cannot be excluded that a particular arrangement of colours which is uncommon for the goods and creates an overall memorable impression can render the sign as a whole distinctive.
As usual, assessment will require a case-by-case analysis.
Finally, as regards the combination of elements, if they are individually distinctive, they will confer distinctiveness on the three-dimensional mark. By contrast, verbal or figurative elements, which are individually considered devoid of distinctive character, do not give rise to a distinctive three-dimensional mark.
On the other hand, a combination of word elements, figurative elements and distinctive and non-distinctive colours, may render the mark distinctive as a whole, as long as the distinctive element can be clearly identified amongst all the other elements.
However, if the consumer does not immediately perceive the distinctive element due to the presence of non-distinctive elements, the combination may result in a non-distinctive sign.
In conclusion, distinctiveness must be assessed on a case-by-case basis, with the common principles set out above serving as guidance in order to ensure that different offices come to a similar and predictable outcome when assessing the inherent distinctiveness of shape marks (three-dimensional) containing other elements when the shape itself is non-distinctive.
Article by Teresa Gonzalez.