Compatibility between trademarks is determined by an overall analysis of the signs and the goods and/or services they claim.
The EUIPO has published a new Common Practice (CP15) in relation to the comparison of goods and services. Among other issues, it addresses the treatment of terms lacking or lacking sufficient clarity and precision.
This new practice incorporates general principles on the common interpretation of the criteria laid down by the Court of Justice in the Canon case, which advocates that in order to assess the similarity of goods or services, several factors should be taken into account, such as the nature of the goods or services, their intended purpose, their use and their competitive or complementary character.
It also provides a basis for interpreting additional factors to be taken into account in such a comparison (the channels of distribution, the relevant public and the usual origin of the goods and/or services) and gives some illustrative examples of the agreed principles.
Among the key concepts of this common practice, the following stand out:
- It is essential that applications comply with the requirement of clarity and precision, in order to define the scope of protection of the trademark.
- IP offices will inform owners of the need to include only clear and precise terms in their trademark applications.
- A term included in a trademark that is unclear and imprecise will not be interpreted in favour of the trademark owner.
- A registered trademark cannot be declared invalid because it contains terms that lack clarity and precision.
- In an adversarial procedure (opposition, invalidity, etc.) unclear or imprecise terms cannot be excluded from the comparison of goods and services, but these terms can only be taken into account on the basis of their literal wording. Moreover, if both conflicting marks contain exactly the same term which lacks or lacks clarity and precision, the terms are considered to be completely identical and therefore identical.
- While the Nice Classification is not decisive for the comparison of goods and services, the explanatory notes on the classes may be helpful in making such a comparison.
This practice will enter into force on 12 June 2025. We hope that it will shed some light and especially contribute to legal certainty for right holders and legal operators.
Sara de Toledo
Lawyer
