(Publ. 27 JAN 2021) Sweden will join a new EU practice, Convergence Program 8, regarding assessment of the genuine use of trademarks in a form other than the registered one. The aim is to identify general principles for assessing when the use of a trademark differs from the registered one and thus changes its distinctiveness and to provide guidance in this respect. The new practice enters into force on 15 January 2021.

The Intellectual Property Offices of the European Trade Mark and Design Network, EUIPN, collaborating under this convergence program to achieve a consensus and thus increase legal certainty, have agreed on an extended common practice in different areas of trademark and design law. Concerning trademarks, the purpose is to avoid the requirements for exact correspondence between the form in which the mark is used and the one registered.

This means that the trademark owner can more easily make variations in the trademark that enable better adaptation of the trademark to the marketing and advertising requirements of the product. This allows a certain flexibility of the trademark as long as it does not change its distinctiveness. As for the obligation to use a registered trademark, this is possible to fulfill by proof of how it is used if it differs only marginally from the form in which it was registered, so that the two marks together can be considered as largely equivalent. It is common for trademarks to be used in conjunction with other characteristics (eg. to display a sub-trademark and/or a so-called “house mark” or together with a company name).

The most important principles are briefly described below, with some examples when assessing different types of changes that may occur that affect marks distinctiveness:

Addition of distinctive elements and non-distinctive respectively

Omission of elements

Change of properties (such as fonts, sizes, colors, and placement) of word marks and figurative marks.

Word marks – Specific representations of the word mark such as its representation in a certain font or in a certain stylization or size, in certain colours or with a certain placement do not in principle change the distinctiveness, as long as the word can be identified as it is used. If the word mark can no longer be identified, the distinctiveness will change.

Figure marks – In the case of pure figure marks with the distinctive character of the figure in a given representation, a change in the representation would therefore probably change the distinctive character.

Combination of changes

The entire EUIPN’s guidelines can be found here>