WHEN THE SHAPE IS NOT DISTINCTIVE IN ITSELF
The IP offices of the European Trade Mark and Design Network continue to collaborate in the context of the Convergence Programme. They have now agreed on a Common Practice with regard to the distinctiveness of three-dimensional marks (shape marks) containing verbal and/or figurative elements when the shape is not distinctive in itself, with the aim of establishing a minimum threshold for distinctiveness of shape marks when the shape itself is non-distinctive.
The scope of the Common Practice is the assessment of the overall inherent distinctiveness of 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 absolute grounds examination.
The following issues are out of scope of the Common Practice:
- assessment of the distinctiveness of the shape;
- assessment of the distinctiveness of the elements on their own;
- implications on relative grounds;
- acquired distinctiveness;
- shapes, or other characteristics, which result from the nature of the goods themselves, which are necessary to obtain a technical result, or which give substantial value to the goods (Art. 4(1)(e) EUTMD).
The examination of the distinctive character of shape marks should be conducted in the following steps.
- The Office will identify all the elements to which the shape mark extends and their inherent distinctiveness, which for the purpose of this common communication are:
- verbal and figurative elements;
- colours (single and colour combinations);
- a combination of the above.
- Where the shape extends to verbal/figurative elements, their identification and assessment of distinctiveness should include consideration of the following factors:
- size/proportion of the elements with respect to the shape;
- contrast of the element with respect to the shape;
- position of the element on the shape.
- Where a shape extends to colour and colour combinations, their identification and assessment of distinctiveness should include consideration of the particular arrangement of colours on the specific shape. 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.
- There are certainly situations where a shape mark contains more than one of the elements reviewed above. Moreover, there may be cases where more than one of the abovementioned factors are relevant to determine the impact of the elements in the distinctiveness of the sign. In all situations, the distinctiveness of the sign will depend on the overall impression produced by the combination of those factors and elements.
- Finally, the assessment of distinctiveness must be based on the overall impression of the combination of the shape and the elements to which it extends, in relation to the goods in question, and considering the consumer’s perception which can be influenced by specific market realities.
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Source: April 01, 2020 – European Trade Mark and Design Network
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