EUIPO: Applications & Opposition

Shirleen McKinley is a frequent contributor to international journals and publications commenting on latest case law and the development of trade mark regulations in general.
Basic insights
- Concepts of Identity, Similarity and Likelihood of Confusion
- Comparing figurative marks
- The relevance of trade mark classes
- Relevant EUIPO documents
Concepts of Identity, Similarity and Likelihood of Confusion
Application for trade mark registration at EUIPO is a fairly straightforward process. However, you need to carefully design your application to avoid objections or later requests for cancellations.
Trade marks can not be registered if there are absolute grounds for refusal. This is related to certain choices of colours, wordings, signs etc. Mostly this is no issue in registration processes.
More important are relative grounds for refusal:
- Identity with earlier marks and identity of goods and service to be protected
- Similarity or identity in goods and services covered and a likelihood of confusion of the relevant public
Identity of marks does not necessarily mean 1:1 identity, as this is mostly not the case. Identity means, that if unimportant elements of a mark are left aside, the remaining elements are very similar.
Identity of goods and services covered is the case when the classes applied coincide with the classes of the earlier trade mark. An overlap is sufficient for identity. Here the classes the marks are registered or applied to be registered are important. But one can not simply block classes, because the opponent may apply for the other party to proof the use of the mark. If it is not used, the other party may apply for cancellation.
Goods and services can be similar, if they belong to different classes but are still sufficiently related to each other. There exists complex case law around this issue.
Likelihood of confusion of the relevant public again refers to the marks as applied for or registered. The more distinct the earlier mark is, the more it is protected, if an applicant is using these distinctive elements. This holds true vice versa. Likelihood is also an issue of the relevant public: If a trade mark is used in an B2B environment, one can expect the relevant public to very closely observe goods and services and related trade marks. The marks therefore can be more similar as would be the case in every day goods and services with a low price tag. Assessing trade marks related to cars, on the same basis, means a rather involved relevant public as one makes a very high involvement buying decision.
In total, there are many elements to be considered when applying to register a trade mark or when choosing to object a new registration.