Improving the chances of successfully registering and defending a trademark
Common practices (CPs) are the result of a joint European effort by IP offices and User Associations.
They are available on the European Union Intellectual Property Network (EUIPN) website. CPs are based on relevant court decisions and IP Offices' best practices to offer valuable insights at different stages of the trademark or design process. This article presents common trademark practices, which are an underestimated source of knowledge for improving the chances of successfully registering and defending a trademark.
Examination
CP1 and CP2 concern the classification of the goods and services. We cannot say it often enough: the more careful the selection of goods and services in the trademark application, the better the trademark will be protected.
CP2 includes information on the Scope of Protection of Nice Class Headings and clarification of terminology. We (warmly) recommend our article on this subject ‘The 12th edition of the Nice Classification and how to avoid delays when registering your trademark’ | Benelux Office for Intellectual Property (boip.int).
Reading CP3 is important, if not indispensable, before filing a trademark that contains descriptive or non-distinctive words and figurative elements. We all know by now that a trademark must be distinctive and not descriptive. What happens when the applicant adds one or more figurative elements to descriptive verbal elements? This solution does not always lead to registration. In CP3 you will find more information on when a non-distinctive or descriptive word becomes registrable when combined with a stylistic or figurative element. Issues like the use of fonts, colours and simple geometric shapes, amongst others, are covered here. CP3 includes a table illustrating various combinations of descriptive and non-distinctive verbal elements with figurative elements and a conclusion regarding their distinctiveness. Use of CP3 is daily routine at BOIP, i.e.: the more you know about this communication, the less likely you are to be surprised by an examination decision regarding figurative trademarks containing descriptive or non-distinctive words.
CP4 deals with black and white trademarks, in particular the question of identity between black and white and colour trademarks.
CP9 deals with three-dimensional trademarks, namely the assessment of the inherent distinctiveness of complex shape trademarks consisting of a non-distinctive shape and other elements, within the absolute grounds’ examination.
CP11 deals with new types of trademarks (such as multimedia, movement, or music trademarks), their registration conditions and requirements.
By the end of March, you will also be able to refer to CP14 which describes common conceptions of public order and morality, establishes general rules for assessing signs that are contrary to public policy and/or morality, discusses the overlap between public policy and public decency, including several scenarios, addresses the issue of freedom of expression when considering whether a sign is contrary to this ground and provides a non-exhaustive list of groups of signs that may fall under this ground.
Dispute
In most trademark disputes before BOIP, the issue is whether the later trademark is identical or similar to the earlier trademark, for identical or similar goods or services, and whether there is a likelihood of confusion on the part of the public. When establishing the similarity of signs, what is the impact of any non-distinctive or weak components of a sign? CP5 helps to assess the criteria of distinctiveness of a trademark (as a whole and in its separate elements) and the impact on the likelihood of confusion.
A trademark must be used for all the products or services covered by the registration. If it is not used, a trademark may be cancelled in the context of a cancellation procedure or lose its legal basis to react against a younger right in the context of an opposition procedure. Gathering evidence of trademark use can be a long and tedious process that should not be wasted by ignoring requirements relating to the submission of such evidence. Our legal expert Eline Schiebroek recently highlighted 5 tips for a successful ‘non usus’ defence or claim | Benelux Office for Intellectual Property (boip.int). In that context, BOIP draws attention to CP8, which deals with the use of a trademark that differs from the sign originally registered. Although it does not literally apply to BOIP proceedings but rather to appeal proceedings, CP12 may also be consulted to understand the mechanisms for presenting evidence and thus increase the chances of successfully safeguarding a trademark.
Regarding bad faith, the CP13, which will be published in March, presents common interpretations of certain key notions for assessing the existence of bad faith, outlines the general rules for assessing bad faith, draws up a non-exhaustive list of factors that should serve as useful guidance when assessing the existence of bad faith, with scenarios, and finally, provides guidance on the scope of a refusal or cancellation on the grounds of bad faith.Lights On outline BOIP recommends you familiarizing yourself with the CPs to improve the chances of successfully registering and defending a trademark, as well as with the updated version of the BOIP Opposition Guidelines, about which our legal expert Pieter has already said a few words in an earlier article.
Questions or remarks?
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