ETMDN: Communication on the Common Practice of Distinctiveness - figurative marks containing descriptive or non-distinctive words

European Trade Mark and Design Network (ETMDN) is a network connecting national and regional Intellectual Property Offices, User Associations and other IP Organisations. The network has on 2 October 2015 published a communication on a common practice in relation to when a figurative mark containing purely descriptive or non-distinctive words passes the absolute grounds examination. The aim of the common practice is to establish and communicate clarity, legal certainty, quality and usability for both applicant and office. According to Article 3(1)(b) and (c) of the Directive 2008/95/EC trade marks which are devoid of any distinctive character, and trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, or the time of production of the goods or of rendering of the service, or other characteristics of the goods or services, shall not be registered, or if registered shall be liable to be declared invalid. The distinctiveness of the mark is assessed by reference to the goods or services in respect of which registration is sought and by reference to the perception of the relevant public. The common practice introduces principles to be generally applied and to cover large majority of cases. The distinctiveness of the mark is still assessed on a case-by-case basis and the principles serve as guidance in order to ensure that the different offices come to a similar outcome. In order to determine if the threshold of distinctiveness is met due to the figurative features in the mark the following criteria are considered:

A. With respect to the word elements in the mark:

• Typeface and font
• Combination with colour
• Combination with punctuation marks and other symbols
• Position of the word elements (sideways, upside-down, etc.)

Non-distinctive examples:

Distinctive examples:

B. With respect to the figurative elements in the mark:

• Use of simple geometric shapes
• The position and proportion (size) of the figurative element in relation to the word element
• Whether the figurative element is a representation of, or has a direct link with, the goods and/or services
• Whether the figurative element is commonly used in trade in relation to the goods and/or services applied for

Non-distinctive examples:

Distinctive examples:

C. With respect to both the word and figurative elements in the mark:

• How combinations of the criteria affect distinctiveness

Non-distinctive examples:

Distinctive examples:

The Common Practice will take effect within three months of the date of publication of the Common Communication. Germany has implemented the common practice both for applications pending on the implementation date and applications filed after the implementation date. For invalidity proceedings the common practice has been implemented only for the requests for invalidity of trademarks which were examined under the common practice. The complete communication with more examples of distinctive and non-distinctive elements can be found here.