When advising a client in respect of trademark registration, the following question pops up quite often: What if we want to use different variations of the sign intended for registration, should we aim for 5-10 different registrations to be on the safe side?
This question is not to be disregarded. This is the reason why the Intellectual Property Offices of the European Trade Mark Network ('EUIPN') have recently agreed and published an additional "Common Practice with regard to the use of trademarks ('TMs') in a form differing from the one registered". This has been issued with the aim of identifying general principles for assessing when the use of a TM in a form differing from the one registered alters the distinctive character ('DC') of a TM. This Common Practice has been drafted in order to provide guidance around the question posed above.
We sum up the important points to note below:
- The types of changes referred to are those which appear when elements are added, omitted, modified or when these changes appear in combination;
- The guidance refers only to word marks, purely figurative marks and composite marks;
- Great significance is to be given to the DC of the TM;
- Assessment will be performed mainly for changes made to the TM as used and whether those contribute to loss of DC;
- Additions of distinctive elements will alter the DC of average or low DC when they become one with the TM as registered;
- Additions of non - distinctive elements will more likely only alter the DC of TM with low DC;
- Omissions of distinctive elements will alter the DC of TM unless of a passive nature for the consumer;
- Omissions of non–distinctive elements will sometimes alter the DC of the average DC TMs and will almost always alter the DC of low DC TMs;
- Modifications (typeface, stylisation, size, colours, or position) will usually not alter the DC of a word TM as long as the TM remains identifiable in the form used;
- Modifications (stylisation, size, colours, or position) will usually alter the DC of a figurative TM unless it concerns characteristics which are not essential contributors to the distinctive character of the TM.
As quoted by the EUIPN 'In general, the more an element contributes to the distinctive character, the more a modification of such element is likely to alter the distinctive character of the sign'. There is thus no clear-cut answer. It will, like always, depend on each particular case.
In essence, this "Common Practise" guidance will be used in the examination procedure in respect of a challenge by an opposition, revocation and/or invalidity action whereby evidence will need to be provided by the relevant party in order to prove genuine use of a trademark.
It is important to note that this "Common Practise" is a very useful tool and has been welcomed by the intellectual property legal world to provide guidance on a matter of great significance for many companies and individual businessmen around the globe. It is often the case that they may wish to proceed with minor, but obvious, alterations to their TMs for the purposes of marketing, advertising or convenience that is why, this sheds light as to how these can be implemented. It will thus provide much needed certainty for this particular problem.
The content of this article is valid as at the date of its first publication. It is intended to provide a general guide to the subject matter and does not constitute legal advice. We recommend that you seek professional advice on your specific matter before acting on any information provided. For further information or advice, please contact Agis Charalambous, Associate at firstname.lastname@example.org
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.