April 6, 2020

The scope of the CP9 Common Practice is the assessment of the overall inherent distinctiveness of shape marks consisting of a non-distinctive shape of the goods themselves, packaging or containers, and other elements to which the shape mark extends, within absolute grounds examination.

The CP9 Common Practices is the result of the consultations and contributions submitted by stakeholders over the past two years as well as collaboration in their respective Working Groups, composed of experts from national and regional IP offices of the EU and users associations, as part of EUIPO’s European Cooperation Projects.

Key points of the Common Practice:

• Verbal and figurative elements: as a starting point, if a non-distinctive shape contains an element that is distinctive on its own, it will suffice to render the sign as a whole distinctive. The size and proportion of the verbal/figurative elements, their contrast with respect to the shape, and their actual position on it, are all factors which may affect the perception of the sign when assessing its distinctiveness;
• Colours: in assessing the distinctive character of a colour, regard must be had to the general interest in not unduly restricting the availability of colours for the other traders who offer for sale goods or services of the same type as those in respect of which registration is sought;
• Combination of factors and elements: there are certainly situations where a shape mark contains more than one of the elements reviewed above. Moreover, there may be cases where more than one of the abovementioned factors are relevant to determine the impact of the elements in the distinctiveness of the sign. In all situations, the distinctiveness of the sign will depend on the overall impression produced by the combination of those factors and elements.

There is also a table setting out the implementation dates in national offices. To access the CP9 Common Practice, click here.