CTM Revision and changes of practice: absolute grounds
OHIM Knowledge Circles, CTM Revision and changes of practice: absolute grounds, Part B: Examination, Section 4: Absolute grounds for refusal, Alicante News december 2013.
Een bijdrage vanuit Knowledge Circle 'Absolute Grounds', OHIM.
The Knowledge Circle Absolute Grounds has revised part of the Guidelines on Article 7. In particular, the work focused on letters (a) to (e) of this provision. The Office’s practice has been revised in respect of some important topics, for example:
| 1. Slogans 2. Single letters 3. Abbreviations and acronyms 4. Names of colours | 5. Shapes giving substantial value 6. Subject matter and titles of books 7. Figurative elements |
1. Slogans The part of the Guidelines dealing with slogans has been revised, in particular as a consequence of a decision by the Court. In case C-398/08P ‘Vorsprung durch Technik’ (innovation through technique [red. IEF 8545]), the CJ set out that slogans are objectionable if they are only perceived as a mere promotional formula. However, slogans are distinctive if, apart from their promotional function, they are perceived as an indication of the commercial origin of the goods. This doctrine has been implemented into the Guidelines. In addition, some guidance is provided as regards the situations in which a slogan can be distinctive, for example when it has various meanings, constitutes a play on words or a conceptual surprise, or involves a mental effort.
2. Single letters Trade marks consisting of a single letter in standard characters with no graphic modifications is another topic which has been revised as a consequence of a Court’s decision. In case C-265/09P ‘(α)’ [red. IEF 9087], the CoJ ruled that those signs must be assessed in the context of an examination, based on the facts, focusing on the goods or services concerned. Moreover, it also stated that the ‘distinctiveness test’ to be applied to these signs is not different from that of other signs. In that respect, the Guidelines explain that the examination of these signs must be based on the specific factual circumstances of the case. It is therefore not possible to rely on general assumptions, such as that consumers will not usually perceive them as distinctive signs. On the contrary, it is now for the Office to establish, on the basis of the case at issue, why the trade mark is not distinctive.
3. Abbreviations and acronyms This type of trade mark can usually be grouped into two cases. Some of them consist of an acronym (e.g. ‘TDI’, as in case T-16/02 ). The Guidelines state that abbreviations of descriptive terms are in themselves descriptive if they are or could be used in that way, and the relevant public recognises them as being identical to the full descriptive meaning. Some other trade marks consist of a descriptive expression conjoined with its acronym (e.g., ‘Multi Markets Fund MMF’, as in case C-90/11 [IEF 11047]). Unlike under previous practice of the Office (which usually tended to accept them), these signs should be now objected to as descriptive because the acronym and word combination together are intended to clarify each other and to draw attention to the fact that they are linked.
4. Names of colours As regards CTMs which consist of the name of a colour, in the past the Office usually objected to these only when the sign applied for sought protection for paints or similar colourant products. Under the new Guidelines, a sign consisting exclusively of the name of a colour must be objected to under Article 7(1)(b) and (c) when the application claims any goods for which the colour can reasonably be perceived by the public as a description of one of its characteristics. For example, BLUE in relation to cheese or GREEN in respect of tea.
5. Shapes giving substantial value Even though it is not as frequently raised as others, the Guidelines on the ground for refusal foreseen in Article 7(1)(e)(iii) has also been subject to revision. Following the Court’s judgment in case T-508/08 (‘loudspeaker’), the Guidelines underline that this ground for refusal will mostly apply to those goods where the shape of the object concerned is the main, although not necessarily exclusive, factor that determines the decision to buy it. For example, objects of art and items such as jewellery, vases and other objects that are bought primarily because of the aesthetic value associated with their shape.
6. Subject matter and titles of books Part of the new Guidelines is dedicated to a related issue: trade marks which consist of the title of a book and those which are descriptive of the ‘subject matter’ of the goods or services.
Certain stories (or their titles) have become so well known that they have ‘entered into the language’ and are incapable of being ascribed any meaning other than that of a particular story. The Guidelines now provide specific instructions on this issue: trade marks consisting solely of a famous story or book title are non-distinctive under Article 7(1)(b) in relation to goods and services which could have that story as their subject matter. This would be the case of ‘Cinderella’ for products like books or films.
On the other hand, guidance is also given as regards those signs which are descriptive under Article 7(1)(b) and (c) of the subject matter or content of the goods or services, in particular in respect of the scope of the objection (i.e. the goods and services concerned and the way in which they are described, for example whether or not they refer to a specific subject matter).
7. Figurative elements Another important issue dealt with in the new Guidelines refers to those trade marks which contain non-distinctive figurative elements. Part of this issue, moreover, is also the object of a Convergence Programme with the IP National Offices. The new Guidelines focus on providing instructions on how to assess the distinctive role, if any, that these elements may have within the overall assessment of the trade mark.
Knowledge Circle 'Absolute Grounds',
