On October 1, 2024, the State office of industrial property in cooperation with the European Intellectual Property Office (EUIPO) adopted and published the practice document “CP9”.
The purpose of this practice document is to determine the minimum threshold of distinctiveness of trademarks consisting of a certain shape, when the shape itself is not distinctive. It is intended to serve as a guide for intellectual property offices, user associations, applicants, rights holders, representatives and other interested parties.
The ” CP9″ practice document has been applied by the State office of industrial property since November 1, 2024.
According to this practice, in order to determine whether the threshold of distinctiveness of three-dimensional trademarks is met, numerous elements and factors are taken into account affecting the distinctiveness of the sign as a whole.
In context of the mentioned practice, the determination of the distinctive character of trademarks composed of a shape should take place in the following steps.
The first step includes determining the elements of the sign and evaluating their inherent distinctiveness. The office will determine all the elements that comprise the trademark consisting of a shape and their distinctiveness.
Elements that are particularly taken into account are verbal and figurative elements, colors (single color and color combinations) as well as a combination of all these elements.
When assessing distinctiveness, the following factors are considered:
• size/proportion of the elements in relation to the form;
• contrast of the element in relation to the form and
• position of the form element.
When a form includes color and color combinations, their identification and assessment of distinctiveness should include consideration of the specific color schedule of the particular form.
The second step is the assessment of the distinctiveness of the sign as a whole. The assessment of distinctiveness must be based on the overall impression of the combination of the form and the elements it covers, in relation to the goods and the consumer’s perception that may be influenced by specific market conditions.
The adoption of this document by the State office of industrial property is important, considering the fact that it contains the principles on which the Office will base its practice followed by numerous examples in order to cover the largest number of cases. Although the distinctiveness of three-dimensional marks will be assessed on a case-by-case basis, the principles of practice will be a starting point and are intended to provide a predictable decision in similar cases.