Convergence Programme Relative Grounds – Likelihood of Confusion

1. Convergence Programme Relative Grounds – Likelihood of Confusion Alicante May 2012

2. Relative Grounds – LoC Project Vision Project Vision “To converge the practices on how to deal with non-distinctive/weak components of trademarks in the context of the examination of relative grounds for refusal. (Likelihood of confusion)”

3. Convergence Programme team Head of Institutional Relations Inge Buffolo Programme Manager Dennis Scheirs Legal Affairs Jose Crespo Operations Luca Rampini Legal support Maria Baldares Legal support Diana Bernabeu Legal Affairs Julio Laporta 3

4. Working Group 24 EU Offices (OHIM inc.) 4 non EU Offices observers (NO, CH, TR, HR) AIM / GRUR observers 4

5. Convergence Programme Kick-Off meeting • Progress • Kick-off meeting was on 8-9 February • Initial survey results • Agreement on • Project methodology • Objectives • Timeline • Agreement on projects scopes • Creation of WP1 and WP2

6. Convergence Programme Kick-Off meeting • Next steps • Survey tailored to project scope • Gain full understanding of current practices • Identify common grounds • Identify building stones of the new common practices • Analysis influencing court cases • WP1 meetings week September 17th

7. Relative Grounds – LoCTimeline

8. Relative Grounds – LoC Initial survey Initial survey • Current practice • Guidelines • Case law • Factors for LoC • Inherent distinctiveness • Enhanced distinctiveness

9. Relative Grounds – LoCInitial survey

10. Relative Grounds – LoCInitial survey CONCLUSIONS • Practice of 26 Offices was collected • Agreement that LoC should be appreciated globally • Case Law of Court of Justice and General Court are reflected in Office Practices • Same factors in general for establishing LoC, although specific order may vary • Majority does not focus on distinctive elements only

11. Relative Grounds – LoCInitial survey Annex: Initial survey questions and answers Questions: Answers:

12. Relative Grounds – LoCScope Project Scope • This project aims at harmonising the practice as to how to deal with non-distinctive/weak components in the context of likelihood of confusion, namely,

13. Relative Grounds – LoCScope Project Scope • Define what components are subject to assessment of distinctiveness in the context of likelihood of confusion where the goods or services are identical: the earlier trade mark (and/or parts thereof) and/or the later trade mark (and/or parts thereof); • Determine which are the relevant factors to assess the distinctiveness of the components  previously defined;

14. Relative Grounds – LoCScope Project Scope • Define how and to what extent the fact that the earlier and the later trade mark coincide only on component which has no distinctiveness determines the outcome on a case of likelihood of confusion • Define how and to what extent the fact that the earlier and the later trade mark coincide only on component which has a low degree of distinctiveness determines the outcome on a case of likelihood of confusion

15. Relative Grounds – LoCScope Project Scope: Out of Scope • The assessment of enhanced distinctiveness and/or acquired distinctiveness through use and/or reputation: for the purposes of this project, it is assumed that there is no evidence and/or claim and/or previous knowledge that any of the trade marks is reputed or has an enhanced distinctiveness acquired through use  • Agreement on the most relevant factors that are considered when assessing the likelihood of confusion.

16. Relative Grounds – LoCScope Project Scope: Out of Scope • Agreement on the assessment and/or the interdependencies between the assessment of distinctiveness and all the other relevant factors considered when assessing the likelihood of confusion

17. Information: (+ 34) 965 139 100 (switchboard)(+ 34) 965 139 400 (e-business technical incidents)(+ 34) 965 131 344 (main fax)information@oami.europa.eue-businesshelp@oami.europa.eutwitter/oamitweetsyoutube/oamitubes

18. THANK YOU!