The European industrial property offices have set up a network with the aim of achieving improved harmonisation in the assessment of trademark and design protection rights, at least within Europe. This is accompanied by improved legal certainty for applicants with regard to the registrability of trade marks.
When assessing the so-called distinctiveness, which is an absolute prerequisite for the registration of a Word/figurative mark in the official register, a strict, strongly word-orientated standard has been applied to date. Distinctiveness is defined in such a way that the trade mark is capable of distinguishing the goods or services of one trade mark proprietor from those of another. This is not the case if the word does not offer the possibility of differentiation, such as a trade mark „crispy and fresh“ for baked goods, because the baked goods of (almost) every baker are crispy and fresh.
It is also an obstacle to registration if the word is descriptive (trade mark „Brot“ for bakery products) or if there is a need to keep it free, because any other baker must also be able to use this term to describe their bread without infringing another person's trade mark rights. This must always be considered when developing a trade mark.
Word and figurative marks with graphic design
The word/figurative mark with a graphic design now offers a possible way around the problem of a non-distinctive word. However, the requirements for the graphic design have recently been so high that such an attempt was almost hopeless, or at least risky. Reducing this risk is the great merit of the new common practice. The regulations that have been adopted not only provide the trade mark examiners at the offices with clear guidance, but also the trade mark applicant, who can influence the chances of registration as early as the design stage of the sign.
The Network's „Common Practice Statement on Distinctiveness - Word/figurative marks with descriptive/non-distinctive words“ of 2 October 2015 provides detailed legal explanations as well as Graphic positive and negative examples which even users who are only familiar with the basics of trade mark law can use to make an assessment. The notice is therefore also an important tool for marketing and advertising departments, from which experience has shown that trade mark law problems often arise. As is so often the case in the legal field, risks and costs are lowest in trade mark law if certain criteria are taken into account from the outset.
The criteria addressed in the Communication concern the Design and arrangement of the word elements, which can already become distinctive if the graphic elements of the typeface and font are capable of distracting the consumer's attention from the descriptive meaning and thus leave a lasting impression of the trade mark. With the unusual arrangement of the word elements, it is important that the consumer focuses his attention on them rather than immediately grasping the descriptive statement. When combined with colours, particular colour arrangements that are unusual and memorable for the relevant consumer contribute to the distinctive character of the mark as a whole.
In addition to the pure typeface design, supplementary graphic elements are of particular importance for word and figurative marks, provided that they are not just simple geometric shapes such as dots, lines, circles, squares, etc. or only outlines or frames of the word are provided. Here, too, it is important that the elements, through their presentation, design or combination with other elements, create an overall impression that is distinctive.
One very important aspect concerns the Proportion between the word and the figurative element. A sign is registrable if the figurative element is clearly recognisable due to its size and position in the sign. However, this requires that the figurative element itself is not descriptive, e.g. by representing or symbolising the goods in question and not sufficiently stylising them or otherwise deviating significantly from the usual representation.
Document with Examples
Author: Hans-Peter Gottfried (Patent Attorney, Dresden)
