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The latest Common Communication: impact of non-distinctive/weak components when assessing likelihood of confusion
OHIM’s Convergence Programme has produced another Common Communication, published on 2 October 2014, with the less than snappy title of Common Communication on the Common Practice of Relative Grounds of Refusal – Likelihood of Confusion (Impact of non-distinctive/weak components).
The Common Communication aims to converge the approach of OHIM and the national offices when considering relative grounds of refusal, but limits itself to developing a common practice on “the impact of non-distinctive/weak components of the marks at issue”. The Common Communication expressly states that the common practice does not deal with what other factors should be considered when assessing likelihood of confusion nor the interdependence between those factors and the assessment of distinctiveness.
The common practice is set out in detail in an Annex to the Common Communication, with the equally long title of CP5. Relative Grounds - Likelihood of Confusion (Impact of non-distinctive/weak components): Principles of the common practice.  The main emphasis of the common practice is that undue weight should not be given to the coincidence of components that are non-distinctive or which have low degrees of distinctiveness. In particular, the common practice states that:
  • A coincidence only in non-distinctive components does not lead to likelihood of confusion.
  • A coincidence in an element with a low degree of distinctiveness will not normally on its own lead to likelihood of confusion.
  • However, there may be likelihood of confusion if:
    • The other components are of a lower (or equally low) degree of distinctiveness or are of insignificant visual impact and the overall impression of the marks is similar OR
    • The overall impression of the marks is highly similar or identical.
 The aim of converging practice across the offices is an admirable one and most practitioners will probably be pleased if this common practice makes it less likely that later marks are blocked on the basis of earlier marks that coincide only in respect non-distinctive/weak components. Whether this common practice can be adopted uniformly and survive review by the Court of Justice and national courts remains to be seen. 

National offices have been given three months to implement the common practice. Further details about the Common Communication will be included in the next edition of HouseMARQUES.
This piece has been kindly prepared for Class 46 by Robert Guthrie (King & Wood Mallesons LLP). Robert is a member of the MARQUES Trade Mark Law and Practice Team,
Posted by: Blog Administrator @ 01.48
Tags: OHIM Common Communication, impact of weak and non-distinctive components on confusion,
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