On the 1st of April 2020 the European Union Intellectual Property Office (“EUIPO”) made public 2 Converging Practices – the CP9 Common Practice ‘Distinctiveness of three-dimensional marks (shape marks) containing verbal and/or figurative elements when the shape is not distinctive in itself and the CP10 Common Practice Criteria for assessing disclosure of designs on the internet’
The current article will focus on the CP9 Common Practice (“CP9”)
The new legislative instruments  adopted in 2015 in relation to the European Union trademark (“EUTM”) brought significative changes, among these the expansion of the concept of trademark and the creation of a new type of trademark.
At the same time, this new system created the risk of a divergent practice among Intellectual Property Offices of the Member States (“MS IPOs”) in examining the eligibility of signs as trademarks, especially that the EUTMR does not contain any definitions of the different trademark types. The main concern was that of different trademarks being accepted by different offices which could have applied different definitions of trademark types.
Shape marks are defined under Article 3(3)(c) in the EUTMIR  as trademarks consisting of, or extending to, three-dimensional shapes, including containers, packaging, the product itself, or their appearance. The Offices agreed to understand that the term ‘extending to’ means that these marks cover not only shapes per se but also shapes that contain, for instance, word or figurative elements, hence, all the elements contained in the shape.
However, the convergence analysis that preceded the launch of the CP9 Common Practice project brought to light a high level of divergence between the criteria being applied by MS IPOs to assess how these other elements contained in the shape of a sign affect the inherent distinctive character of shape marks that would otherwise be considered non-distinctive.
The different assessment of distinctiveness creates, according to the CP9, a risk of less distinctive shapes being monopolized in certain jurisdictions, which, given the unitary nature of the EU market could cause problems throughout the common economic area, ultimately reducing choice for consumers and competition for trade.
In order to prevent such concerns, representatives from the MS IPOs, the EUIPO and several other associations such as the User Associations (“UAs”), the International Association for the Protection of Intellectual Property (“AIPPI”), the International Trademark Association (“INTA”), and the Association of Trade Mark and Design Law Practitioners (“APRAM”) have worked closely to agree and elaborate a set of principles based on settled case-law and best existing practices.
The CP9 project was launched in October 2017 with the objective of establishing a minimum threshold for distinctiveness of shape marks when the shape itself is non-distinctive. The official publication of the CP9 Common Practice was made on the 1st of April, 2020.
The Common Practice will take effect within three months of the date of publication of the Common Communication.
In Romania, the implementation date of the CP9 was set for 01.07.2020. The complete list of the implementing dates for each Member State is available here.
Scope of the CP9
The scope of the Common Practice is therefore the assessment of the overall inherent distinctiveness of shape marks consisting of a non-distinctive shape of the goods themselves, packaging or containers, and other elements to which the shape mark extends, within absolute grounds examination.
The principles set in the Common Practice are based on the established case law of the Court of Justice of the European Union such as Libertel (C-104/01), Blau/Gelb (C-49/02), Torches (C-136/02 P), Perwoll (C-218/01) and the existing practices.
According to the CP9, the examination of the distinctive character of shape marks should identify in the first place all the elements of the sign, such as verbal and figurative elements, colours or a combination of these. Further, the assessment of their inherent distinctiveness should be based on several factors such as size and proportion, contrast including engraving/ embossing/ debossing, position. Where a shape extends to colour and colour combinations, their identification and assessment of distinctiveness should include consideration of the particular arrangement of colours on the specific shape.
The second step in this examination is the assessment of distinctiveness of the sign as a whole.
This must be based on the overall impression of the combination of the shape and the elements to which it extends, in relation to the goods in question, and considering the consumer’s perception which can be influenced by specific market realities.
According to the CP9, in analyzing the elements and factors affecting the distinctiveness of the sign as a whole, the premise is that if a non-distinctive shape contains an element that is distinctive on its own, it will suffice to render the sign as a whole distinctive. In the absence of any graphic (including colours) or word element the relevant shape must depart substantially from the norm or customs of the sector in order to be eligible for registration.
In order to illustrate the principles and standards proposed, a large number of practical examples are presented with detailed explanations.
Cooperation with the MS IPOs has been a core task for the EUIPO in the past years in order to promote convergence of practices and tools in the fields of trademarks and designs.
Until the release of the CP9 and CP10 Common practices in April 2020, a number of 8 other Common Practices were created for enhanced transparency, consistency and certainty, as well as for consistent standards of examination across national and regional IP Offices:
- Common Communication on the representation of new types of trade marks, 4 December, 2017;
- Common Communication on graphic representation of designs, 15 May 2018;
- Common Communication on the Common Practice of Distinctiveness – Figurative Marks containing descriptive/non-distinctive words, 2 October 2015;
- Common Communication on the implementation of IP Translator, 20 February 2014;
- Common Communication on the Common Practice on the General Indications of the Nice Class Headings, 28 October 2015;
- Common Communication on the Common Practice on the Acceptability of Classification Terms, 20 February 2014;
- Common Communication on the Common Practice of the Scope of Protection of Black and White (“B&W”) Marks, 15 April 2014;
- Common Communication on the Common Practice of Relative Grounds of Refusal – Likelihood of Confusion (Impact of non-distinctive/weak components), 2 October 2014.
All these can be found here.
The C9 Common Practice is meant to shed some light upon the steps and factors that must be taken into consideration when assessing the distinctiveness of the shape trademarks.
The instrument is useful not only for MS IPOs, but also for applicants and practitioners in advising Clients. Three-dimensional marks or shape marks have become very popular in the past years, especially for containers and packaging, but there have been several issues related to their registration since containers and packaging are also eligible for protection under the design law, so clear criteria for trademark registration was necessary. The CP9 is therefore mostly welcome.
The CP9 Common Practice can be found here.
 Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (“EUTMR”) and Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks.
 Commission Implementing Regulation (EU) 2018/626 of 5 March 2018 laying down detailed rules for implementing certain provisions of Regulation (EU) 2017/1001 of the European Parliament and of the Council on the European Union trade mark, and repealing Implementing Regulation (EU) 2017/1431.