What is a significant departure from the norm?

Publication details

Ilanah Fhima, ‘What is a significant departure from the norm? Assessing the inherent distinctiveness of 3D shape marks' (2022) 17(12) Journal of Intellectual Property Law & Practice 993.

Abstract

This article considers the implementation of Article 7(1)(b) of Regulation 2017/1001 European Trade Mark Regulation (EUTMR) as it applies to shape marks. In order for any trade mark to be registered, it must not be ‘devoid of distinctive character’. The Court of Justice of the European Union (CJEU) has stated that the test for inherent distinctiveness is the same for all forms of marks. While maintaining this position in relation to shape marks, it has also been said that for such marks to be registered they must depart significantly from the norm in the sector concerned.

There has been much discussion of whether the shape mark test is in fact stricter than that applied for other forms of marks. However, this article also examines the issue from a different angle, asking how this ‘norms test’, which the CJEU has never explained, is implemented in practice. In particular, it identifies and critiques a body of practice on the part of the European Union Intellectual Property Office (EUIPO) in conducting internet searches to identify ‘the norms’ and comparing the mark in question to those norms and suggests how this practice could be improved.