In principle, the owner of a registered trademark should use the sign as it is registered. However, in the business practice, the trademark is often used in a different manner due to business needs that require to adjust the sign, for example, through stylistic changes or using it together with other graphic elements or words.
Before doing variations to the sign in use it is important to make a deep evaluation of them. Indeed, the same might be risky since the actual use made of the registered trademark can be assessed by Intellectual Property Offices and courts during opposition or revocation proceedings with consequences that impact the registration.
The EU system allows certain flexibility in the use of the trademark in forms differing from the one registered. In particular, such use is still acceptable as long as the differing elements do not alter the distinctive character of the trademark as registered (articles 18 EUTMR and 16 EUTMD). Understanding when a variation is such as to modify the distinctive character of the registered trademark has been interpreted differently by the Intellectual Property Offices of the Member States, which have given rise to significant divergences and conflicting decisions.
With the aim of eliminating the uncertainty that has been created and having increasingly similar and predictable conclusions by the Offices of the Member States, on 15 October 2020 was published the Common Practice “CP8: Use of a trade mark in a form differing from the one registered” drafted by the EUIPN (European Union Intellectual Property Network) providing general principles for evaluating the changes occurred in the trademark used and their effect on the distinctive character.
The Common Practice states that the assessment of whether a variation is acceptable shall be conducted step by step.
Firstly, it shall be conducted an evaluation of the registered mark, identifying the elements that contribute to its distinctive character and defining their degree of distinctiveness. Secondly, a direct comparison of the sign registered and the one in actual use should be conducted.
After that, it should be verified whether the distinctive elements previously detected exist, assessing the potential modifications, the additions or omissions, taking into account the overall impression generated by the signs.
The Common Practice offers many examples that show when the variation of the mark may result in an alteration of the distinctive character. It is, for example, reported that:
- In principle, the specific representation of the word mark, such as its representation in a particular typeface, stylization, size, colors, or position, does not alter the distinctive character of the word mark as registered as long as the word remains identifiable as such in the form used:
- The distinctive character is altered by the addition of a distinctive element that interacts with the sign as registered in such a manner that it can no longer be perceived independently alters its distinctive character:
Further examples are available here.
Although the Common Practice states that the principles set out are designed to be of general application and aim to deal with the majority of cases, it should be noted that the assessment of alterations in the distinctive character of a trademark must always be assessed on a case-by-case basis.
Italy will implement the Common Practice starting from January 15, 2021.
This Practice is intended to be a guide for examiners called to evaluate the use of signs in forms other than those registered to facilitate similar and predictable outcomes and – hopefully – for the courts as well. Nevertheless, it represents also a useful tool to offer interesting insights to trademark owners who are required to constantly adapt their signs to marketing and promotion needs.
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Source: May 28, 2020 – European Trade Mark and Design Network
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