Assessing the impact of nondistinctive/ weak components of trade marks in the examination of likelihood of confusion

By Paola Ruggiero, Licia Garotti


The impact of non-distinctive/weak components of trade marks is a relatively common issue for any trade mark owner or applicant. However, the issue is less straightforward than it may initially appear.

The European Trade Mark and Design Network has recently published a 'common practice' document containing guidelines on how the TM offices of the EU have agreed to approach this issue. The document represents another important step on the road towards common practice across the IP Offices of the EU in a variety of areas.

This particular common practice sets out four objectives when approaching the impact of non-distinctive/weak components on the assessment of likelihood of confusion and contains a number of useful examples to illustrate these principles, including:

  • A coincidence in an element with a low degree of distinctiveness will not normally lead to likelihood of confusion. Example:

(Class 9: Credit cards)


  • 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. Example:

(Class 43: Holiday accommodation services)


  • There may also be such likelihood if the overall impression of the marks is highly similar or identical. Example:

(Class 11: Refrigerators)


The common practice can be found by clicking here

This article is part of BrandWrites by Bird & Bird - May 2015