Overview
The EU Intellectual Property Office (EUIPO) has published two new Common Practice ('CP') communications in April 2020. The first, CP9 (link), relates to the inherent distinctiveness and registrability of 3D/shape trade marks which also contain word and/or figurative elements when the shape is not distinctive in itself. The second, CP10 (link), relates to the criteria for assessing disclosure of designs on the internet.
The CPs are each the result of two years of consultations and collaborations with national IP offices, IP experts, and users of the EU trade mark and design systems. They aim to provide harmonisation of practices at the EUIPO and across EU member states and provide clarification and guidance to users on the application of some key EU principles in practice. Both CPs take effect from 1 April 2020 at the EUIPO and will be applicable to all pending and future proceedings.
CP9 – 3D/shape trade marks
CP9 sets out a two-step examination process for assessing the distinctive character of shape marks:
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identify all the elements of the sign (shape, words, logos, colours etc) and assess the inherent distinctiveness of each of these individually; and
- assess the distinctiveness of the sign as a whole based on its overall impression, in relation to the goods/services covered, and taking into account consumer perception which can be influenced by specific market realities.
Other key points raised within the context of establishing a minimum threshold for distinctiveness of shape marks containing other elements, include:
- If a shape mark contains another element (such as a word or a logo) that is distinctive in its own right and can be clearly identified amongst all the other elements, this will, in general, be sufficient to result in the mark as a whole being considered inherently distinctive.
- A mark combining a number of elements which are all non-distinctive will not usually result in a distinctive mark overall, unless the combination of the elements manages to create a distinctive overall impression.
- Adding a single colour element to a non-distinctive shape mark is extremely unlikely to render the mark as a whole distinctive. However, adding an unusual arrangement of colours in a specific and memorable way may potentially be sufficient to meet the distinctiveness threshold.
CP10 – Online disclosure of designs
CP10 confirms that when assessing the online disclosure of a design, the key criteria to consider include: the source of the disclosure (website, app, e-mail etc), the date of the disclosure to the public, the design disclosed, and whether any exceptions apply to the general rules. The CP sets out information and recommendations regarding each of these key points in detail. Some general points worth noting in particular include:
- Sources: a design can be disclosed anywhere in the world, including the internet, as long as the source of disclosure is properly identified and evidenced. If the source is a website or an app, a printout or screenshot of the relevant information, displaying a clear image of the relevant design revealing its features, and ideally the date of disclosure and the URL address, should be created. For e-mail, the evidence of the communication should show a representation of the design (not simply that an attachment was included) and the relevant date should be clearly indicated. For file sharing, the link between the index of the file on the platform and its content will need to be established as will the date of upload/date of first download by a user.
- Date: for websites and apps, unless another earlier relevant date can be established from the contents of the evidence, the printout/screenshot date will be assumed to be the date of disclosure. Website archiving services (such as the 'WayBack Machine') are preferred over search engine date services. It may be advisable to use electronic timestamping as a precautionary measure to secure the evidence of disclosure.
- Design: images in the evidence should be precise and of sufficient quality to allow the definition of the features of the disclosed design.
- Exceptions: once the disclosure event has been proven, there is a presumption that the design has been made available to the public. However, this may be rebutted in some circumstances, for example, if the disclosure was on a restricted internal database within a company, if the language of disclosure or certain geo-blocking conditions mean the disclosure could not reasonably have become known in the normal course of business to the circles specialised in the sector concerned, or if the design was disclosed under conditions of confidentiality.
Commentary
CP9 – Although EU IP Offices should not apply more stringent examination criteria when considering the inherent registrability of shape marks, in practice it is much more difficult to achieve registration for these types of marks at the EUIPO and in many member states. Consumers are used to identifying the origin of products on the basis of word or figurative logo trade marks, but not in the habit of doing so on the basis of a product’s shape in and of itself. Therefore, it is useful for trade mark applicants to now have EU-wide harmonised guidance as to what and how additional elements could be added to, or included within, a shape trade mark to help get an application over the inherent registrability line.
CP10 – Whether a design has been disclosed and the date on which this occurred can be major factors in design proceedings and affect the validity of the design right itself. The assessment criteria and recommendations made in this CP help to provide clarity as to best practice for disclosure through current, emerging and future technologies.
How can Burges Salmon help?
If you would like to discuss any of the issues raised in this article or would like further information, please contact Jeremy Dickerson or Laura Tennant in the IP team.