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Manual changes in Relative Grounds issues

The last major change to the section of the Manual of Trade Mark Practice on Identity and Likelihood of Confusion and the section on Proof of Use took place some years ago, although partial modifications were introduced in 2009 and 2010. Since then, a need for changes in practice has arisen and abundant decisions from the Boards of Appeal and judgments from the EU Courts have been delivered. So, the time for a comprehensive revision has arrived!

Five months of research, fruitful debates, careful drafting combined with the enthusiasm of a number of OHIM staff coming from various departments have resulted in a revised manual which is ready for publication and entry into force. The guiding principle for the revision has been to update the manual in line with any identifiable trend in the case-law of the Court of Justice and the General Court (ECJ) and in the decisions of the OHIM Boards of Appeal. Moreover, the revised manual is presented as a more user-friendly tool where the ideas are presented in an ordered fashion following the Office’s methodology for assessing likelihood of confusion and analysing the proof of use. Examples are set out in a clearer way.

Manual on Identity and Likelihood of Confusion

Changes in the structure

The first obvious change regards the structure of this section of the manual. The change in the structure follows the Office’s methodological approach to the assessment of likelihood of confusion: according to the Office’s practice, following invaluable ECJ guidance, whether a likelihood of confusion exists depends on a global assessment of several interdependent factors. The first step in assessing whether likelihood of confusion exists is to establish these factors; the second step is to determine their relevance in a separate ‘Global Assessment’ in which a conclusion on likelihood of confusion is reached after balancing the variety of these different factors.

Consequently, the new manual follows a logical order where, after an introductory chapter, each of the factors is dealt with in separate chapters. These factors are partially covered in (and spread over) various sections of the current manual. The new manual ends with a chapter on the overall assessment, where all the previous factors are taken into account and particular issues are developed. Finally, “Identity” no longer has a specific chapter. It is dealt with in the relevant sections (e.g. identity of goods and services and identity of signs in the chapter on the comparison of the goods and services and the chapter on the comparison of signs, respectively).

Content and main changes in the chapters

The General Principles and Methodology chapter provides an introduction to and overview of both the concepts of (i) identity and (ii) likelihood of confusion. It establishes basic principles for establishing identity and for assessing likelihood of confusion and refers to questions of fact and questions of law in assessing likelihood of confusion. Finally, it includes a new section where the methodological approach followed in drafting opposition decisions is explained in detail.

The Comparison of Good and Services chapter has also been revised with the objective of providing clearer guidance, providing consistent examples and relevant recent case-law. However, in view of the upcoming ECJ judgment C‑307/10 ‘IP Translator’, this chapter will not be published before the possible repercussions of this judgment on the Office’s practice have been included.

In the Comparison of Signs chapter, the new manual develops in greater detail the three aspects of the comparison of the signs with abundant examples, covering as many situations as possible. The comparison of the signs follows the principle of “objective comparison”, i.e. all the elements of the signs are taken into account, irrespective of their distinctiveness or dominance. This is currently the practice of the Opposition Division but it was not established in the manual. Moreover, there is a profound revision of the sections on the three levels of comparison:

• Visual comparison: it gives different rules depending on the presence of a verbal element in any of the signs in conflict.
• Aural comparison: new specific sections are added, inter alia, on (i) signs and elements in the signs subject to an aural comparison (purely figurative signs are not subject to a phonetic assessment); (ii) sounds in different order and (iii) signs with foreign words.
• Conceptual comparison: a number of new sections are included which provide simple guidelines on how to assess the semantic content of words, parts of words (how to split them), misspelled words, numbers, figurative signs & symbols and names/surnames. There are a number of changes of practice: colours and numbers now have a concept as well as names and surnames.

Three new chapters have been included in the manual specifically to deal with the factors related to the Assessment of Distinctiveness, the Assessment of Dominant Elements and the Relevant Public and Degree of Attention. The chapters establish in a methodological way the Office’s current practice in dealing with these factors.

Finally, the Global Assessment chapter does not include any change of practice regarding the principles applied to the overall assessment of the factors. A substantial revision of “specific issues” has been undertaken to provide structured guidelines, including updated examples. In particular, the chapter begins with an introduction where the principles and general remarks applicable to the overall assessment are included. The following sections of the chapter tackle a number of issues and/or arguments brought by the parties which could have an impact on the assessment of likelihood of confusion. The topics are dealt with following a didactic approach where guidelines are easily identified and supported with examples (e.g. impact of the method of purchase of goods and services; coexistence of the conflicting marks on the market in the same territory; incidences of actual confusion; prior decisions by Community or national authorities involving conflicts between the same (or similar) trade marks; short signs; names/surnames; family of marks/series of marks; composite signs).

Manual on Proof of Use

Changes in the structure

The revised chapter of the manual follows to a large extent the current structure of the manual, with an initial section on General Considerations (Section I), followed by a section on Substantive Law which describes in detail the fundamentals of genuine use (Section II) and a closing section on Procedure (Section III).

Changes in content

The revised text reflects the Office’s current practice, bearing in mind the pedagogic and practical purpose of the document. The main modifications as regards the section on “Substantive Law” are as follows:

• The standard of proof applied by the Office is set out in a clearer way (no de minimis rule).
• As to nature of use and, in particular, use as a mark, the revised manual provides more guidance on public/private use, commercial/promotional activity and the use on the internet.
• The section on time of use is further developed as regards international registrations.
• Concerning extent of use, the manual now includes updated examples on sufficient and insufficient use. The principles identified from the case-law are clearly identified.
• Following recent ECJ judgments, the manual now provides practical guidelines on acceptable omissions/additions to assess whether the earlier mark has been used as registered.
• As regards use for the relevant goods and services, the new manual includes rules in a number of situations. A section on pharmaceuticals is included.
• Finally, as regards legal use, the section on “Government or Court intervention” has been revised following recent Board decisions.

With respect to “Procedure”, the revised Manual now includes examples of sufficiently explicit and unambiguous requests, and it adds a number of recommendations on the appropriate format and content of the evidence submitted. Moreover, the relevant examples have been updated.

Knowledge Circle “Relative Grounds”