EU 23 Jun 2020
Sweden will join the new Common Practice within the EU with regards to the distinctiveness of shape marks, sometime referred to as three-dimensional marks. This new practice applies to shape marks containing verbal and/or figurative elements when the shape itself is not distinctive. The practice aims to make sure that the minimum level is reached to ensure the overall assessment for registrability. This new Common Practice will take effect on 1 July 2020.
This new EU practice is a continuation of European trademark reform that will further harmonize the respective trademark laws of the EU Member States. If the distinctiveness is assessed in different ways, there is a risk that trademarks with a lower threshold of distinctiveness are registered in certain jurisdictions within the EU. This could cause problems throughout the common economic area and, by extension, reduce consumer choice and trade competitiveness. Therefore, the various IP offices in the EU countries have agreed on this common practice.
This new practice applies when the distinctiveness of the shape marks is not sufficient for registration alone, but the trademark also needs to contain verbal and/or figurative elements.
When assessing the distinctiveness, the trademark’s function, reference to the goods and the consumer’s perception are taken into consideration. The assessment includes the trademark’s elements and their distinctiveness as well as the trademark as a whole. In order to determine if the threshold of distinctiveness is met, a number of factors and circumstances affecting the distinctiveness as a whole need to be taken into account. Below are the main statements of the principles of the Common Practice:
Verbal and figurative elements
As a starting point, if a non-distinctiveness shape contains a part which has distinctiveness in itself, it will suffice to render the mark as a whole distinctive. The size and proportions of the verbal/ figurative elements, their contrast with respect to the shape and their actual position on it, are all factors that may affect the perception of the mark assessing its distinctiveness.
In assessing the distinctive character of a colour, regard must be had to the general interest in not unduly restricting the availability of colours for the other traders.
The use of contrast can also affect the capacity of the verbal/figurative elements to be identified, and ultimately to render the sign distinctive as a whole. The use of less contrasting colours can still be sufficient to allow an element to be identified as distinctive.
Due to their nature, the colour of engravings/embossings/debossings blends in with the product itself and makes them harder to be perceived and identified. Nevertheless, engravings are frequently used to distinguish shape marks.
Combinations of factors and elements
There are situations where a shape mark contains more than one of the elements reviewed above.
Moreover, there may be cases where more than one of the abovementioned factors are relevant to determine the impact of the elements in the distinctiveness of the sign. In all situations, the distinctiveness of the mark will depend on the overall impression produced by the combination of those factors and elements.