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Common Communications on the practice of EUIPO and EU member states

On 19/06/2012 the Court delivered its ruling in Case C-307/10 "IP Translator", giving the following answers to the referred questions:

1 – Directive 2008/95 must be interpreted as meaning that it requires the goods and services for which the protection of the trade mark is sought to be identified by the applicant with sufficient clarity and precision to enable the competent authorities and economic operators, on that basis alone, to determine the extent of the protection conferred by the trade mark;

2 – Directive 2008/95 must be interpreted as meaning that it does not preclude the use of the general indications of the class headings of the Nice Classification to identify the goods and services for which the protection of the trade mark is sought, provided that such identification is sufficiently clear and precise;

3 – an applicant for a national trade mark who uses all the general indications of a particular class heading of the Nice Classification to identify the goods or services for which the protection of the trade mark is sought must specify whether its application for registration is intended to cover all the goods or services included in the alphabetical list of that class or only some of those goods or services. If the application concerns only some of those goods or services, the applicant is required to specify which of the goods or services in that class are intended to be covered.

Implementation of "IP Translator" version 1.3 (pdf, 706 kB)
Implementation of "IP Translator" version 1.2 (pdf, 518 kB)

 

On 19/06/2012 the Court delivered its ruling in Case C-307/10 "IP Translator", giving the following answers to the referred questions:

1 – Directive 2008/95 must be interpreted as meaning that it requires the goods and services for which the protection of the trade mark is sought to be identified by the applicant with sufficient clarity and precision to enable the competent authorities and economic operators, on that basis alone, to determine the extent of the protection conferred by the trade mark;

2 – Directive 2008/95 must be interpreted as meaning that it does not preclude the use of the general indications of the class headings of the Nice Classification to identify the goods and services for which the protection of the trade mark is sought, provided that such identification is sufficiently clear and precise;

3 – an applicant for a national trade mark who uses all the general indications of a particular class heading of the Nice Classification to identify the goods or services for which the protection of the trade mark is sought must specify whether its application for registration is intended to cover all the goods or services included in the alphabetical list of that class or only some of those goods or services. If the application concerns only some of those goods or services, the applicant is required to specify which of the goods or services in that class are intended to be covered.

Common Practice on the General Indications of the Nice Class Headings version 1.2 (pdf, 583 kB)
Common Practice on the General Indications of the Nice Class Headings version 1.1 (pdf, 440 kB)

 

On 19/06/2012 the Court delivered its ruling in Case C-307/10 “IP Translator”, giving the following answers to the referred questions:

1 – Directive 2008/95 must be interpreted as meaning that it requires the goods and services for which the protection of the trade mark is sought to be identified by the applicant with sufficient clarity and precision to enable the competent authorities and economic operators, on that basis alone, to determine the extent of the protection conferred by the trade mark;

2 – Directive 2008/95 must be interpreted as meaning that it does not preclude the use of the general indications of the class headings of the Nice Classification to identify the goods and services for which the protection of the trade mark is sought, provided that such identification is sufficiently clear and precise;

3 – an applicant for a national trade mark who uses all the general indications of a particular class heading of the Nice Classification to identify the goods or services for which the protection of the trade mark is sought must specify whether its application for registration is intended to cover all the goods or services included in the alphabetical list of that class or only some of those goods or services. If the application concerns only some of those goods or services, the applicant is required to specify which of the goods or services in that class are intended to be covered.

Common Practice on the Acceptability of Classification Terms (pdf, 591 kB)

 

The trade mark offices of the European Union in their commitment to continue to collaborate in the context of the Convergence Programme through the European Trade Mark and Design Network have agreed on a common practice with regard to trade marks in B&W and/or greyscale. Thecommon practice is made public through a Common Communication with the purpose of further increasing transparency, legal certainty, and predictability for the benefit of examiners and users alike.
The subject of this Common Communication is the convergence of the different handlings of trade marks in B&W and/or greyscale as regards priority, relative grounds, and genuine use.

Common Communication on the Common Practice of the Scope of Protection of Black and White (“B&W”) Marks (1,47 MB)

 

The trade mark offices of the European Union in their commitment to continue to collaborate in the context of the Convergence Programme through the European Trade Mark and Design Network have agreed on a common practice with regard to the impact of non-distinctive/weak components of marks in the examination of likelihood of confusion (relative grounds). The common practice is disseminated publicly through a Common Communication with the purpose of further increasing transparency, legal certainty, and predictability for the benefit of examiners and users alike.
The subject of this Common Communication is the convergence on the approach regarding the impact of non-distinctive/weak components of the marks at issue on the assessment of likelihood of confusion.

Common Practice of Relative Grounds of Refusal – Likelihood of Confusion (Impact of non-distinctive/weak components) (pdf, 1,6 MB)

 

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 in relation to when a figurative mark, containing purely descriptive/non-distinctive words, passes the absolute grounds examination because the figurative element renders sufficientdistinctive character. 

Distinctiveness – Figurative Marks containing descriptive/non-distinctive words (2,1 MB)

 

 Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks (hereinafter referred to as the “new Trade Mark Directive”) contains provisions further approximating the laws of the Member States relating to trade marks, with regard to both substantive and procedural matters. One of the key changes brought about by the new legislative instruments is the elimination of the graphic representation requirement from the definition of both EU and national trade marks. Such elimination gives rise to the possibility of accepting new types of trade marks, filed in formats not previously provided for by national or regional systems. This document reflects the approach taken or that may be taken by the EUIPO and the Member States IPOs concerning the definitions and representation requirements for the new types of trade marks resulting from the abolishment of the graphical representation requirement. This will assist in the transposition of the new Trade Mark Directive in as harmonised a manner as possible, with the intention of improving legal certainty, predictability and accessibility for users.
 

Common Communication on the representation of new types of trade marks (pdf, 470 kB)

Overview of the accepted electronic file formats for all types of trade marks by each Office (pdf, 69 kB)

 

CP 9 - Distinctiveness of threedimensional marks (shape marks) containing verbal and/or figurative elements when the shape is not distinctive in itself

The IP offices of the European Trade Mark and Design Network 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.

Distinctiveness of threedimensional marks (shape marks) containing verbal and/or figurative elements when the shape is not distinctive in itself (pdf, 3,3 MB)

 

The Intellectual Property Offices of the European Trade Mark and Design Network continue to collaborate in the context of the Convergence Programme. They have now agreed on an additional Common Practice with regard to the use of trade marks in a form differing from the one registered with the aim of identifying general principles for assessing when the use of a trade mark in a form differing from the one registered alters its distinctive character and to provide guidance in this respect.

Use of a trade mark in a form differing from the one registered  (pdf, 2,1 MB)

 

The Intellectual Property Offices of the European Union Intellectual Property Network continue to collaborate in the context of converging trade mark and design practices. They have now agreed on an additional Common Practice on trade marks with the aim of providing guidance with regard to the examination of formal requirements and grounds for refusal and/or invalidity of new types of trade mark, namely, sound, motion, multimedia and hologram marks, and the new ways of representing them.

New Types of Marks: Examination of Formal Requirements and Grounds for Refusal (pdf, 2,6 MB)