UPDATE: GENUINE TRADEMARK USE

If trademarks are part of your daily work, you have surely come across the issue before:  You have a registered trademark, but it is used differently in commerce – either because the trademark used has been modernized compared to its registered form, or because parts of the registered mark have been omitted when used or because parts have been added in comparison to the registered mark. In all these cases, the question arises whether or not use of the trademark in a form differing from the one registered can still be deemed use of the registered mark. Otherwise, your registered trademark might be at risk and action needs to be taken to ensure that no actual loss will occur. Guidance is now provided by the trademark offices of the European Union member states and the EUIPO.

(examples of similar, but different marks)

Common Communication CP9

On 7 October 2020, we held a successful webinar in which we discussed genuine use of a trademark as one of the main topics. A week later, on 15 October 2020, the Intellectual Property Offices of the European Trade Mark and Design Network published their Common Communication CP9. In that, they agreed on a Common Practice with regard to the use of trademarks in a form differing from the one registered. The Common Practice aims at providing guidance in identifying general principles for assessing when the use of a trademark in a form differing from the one registered alters its distinctive character. The complete Common Communication with comprehensive explanations can be found at: https://www.tmdn.org/network/-/publication-of-cp8-common-communication

The following is a brief summary of the principles set out in detail in the Common Communication:

1. GENERAL APPROACH

STEP 1: Assess the sign as registered by taking into account its distinctive and visually dominant elements

STEP 2: Assess – by direct, side-by-side comparison of the two signs – whether those elements that contribute to the distinctive character of the sign as registered are present and/or modified in the sign as used

STEP 3: Assess the impact of the modification(s) on the distinctive character of the sign as registered; in particular:

2. ADDITIONS

• NOTE: It is not an addition but simultaneous use of several signs, when several signs are used together but remain independent from each other and perform their distinguishing function as separate signs.
• Distinctive element added to sign as registered -> Most likely alteration of distinctive character
• Addition of non-distinctive elements or elements of low distinctive character to a registered mark of average distinctiveness -> No alteration of distinctive character (regardless of whether these elements are visually dominant or not)
• Any addition to a registered sign of low distinctiveness -> Likely to alter distinctive character

3. OMISSIONS

• NOTE: All the distinctive elements of the sign as registered contribute to its distinctive character. Therefore, the omission of one of those elements in the sign as used is likely to alter the distinctive character of the sign as registered, unless the omitted element will be disregarded by the consumer due to its small size and/or position.
• Omission of a non-distinctive element in a registered sign of average distinctiveness -> Not likely to alter distinctive character
• Omission of an element of low distinctive character in a registered sign of average distinctiveness -> Not likely to alter distinctive character unless the omitted element is visually dominant or interacts with other elements
• If the sign as registered is composed exclusively of elements of low distinctive character and/or of non-distinctive elements, the combination of which renders the sign as a whole registrable, the omission of one or more of these elements will generally alter the distinctive character of the sign as registered

4. MODIFICATIONS (for instance typeface, size, color, position)

• Use of a word mark in a specific representation (typeface, stylization, size, colors, position) with the word still identifiable as such -> No alteration of distinctive character
• When the word as such is no longer identifiable -> Alteration of distinctive character
• Modifications of purely figurative marks -> Most likely alteration of distinctive character
• Composite marks where the distinctive character essentially derives from its verbal elements -> Use of verbal elements in modified form will not normally alter the distinctive character
• Composite marks where the distinctive character essentially derives from its figurative elements -> Use of figurative elements in modified form is likely alteration of distinctive character
• NOTE:  The more an element contributes to the distinctive character of a composite mark, the more a modification of such element is likely to alter the distinctive character of the sign.

5. COMBINATION OF ADDITIONS, OMSSIONS AND/OR MODIFICATIONS

• Step 1: Assess whether any of the changes alone would lead to the alteration of the distinctive character of the sign as registered
• Step 2: Assess the effect of the combination of all changes

The above summary is intended to give you a first idea of how the trademark offices in the European Union will assess the use of a trademark in a form differing from the one registered. We strongly recommend reading the complete Common Communication CP9 for more detailed information, https://www.tmdn.org/network/-/publication-of-cp8-common-communication.

Should you need any further guidance in addition or just like a second opinion on whether or not the use of your trademark can still be deemed use of the mark as registered, you are welcome to contact us at any time by phone at +49 89 55879870 or by email to info@lexdellmeier.com. We will be pleased to discuss your case and advise.

Please also see our blog article of 29 May 2020 on the topic “Trademark Use – Always an Issue” (https://www.lexdellmeier.com/de/node/1589).