On October 15, 2020, the European Union Intellectual Property Network (EUIPN) has published its Common Practice No. 8 (CP8) about the ‘Use of a trade mark in a form differing from the one registered’.
The CP8 provides guidelines and practical examples for users about the common standards to be applied by the EU Trademark Office (EUIPO) and the national offices of the EU Member States (MS IPOs) after consultation with all parties as well as representatives from brand holders.
According to the objective of the CP8:
“This Common Practice document aims to identify general principles for assessing when the use of a trade mark in a form differing from the one registered alters its distinctive character and to provide guidance in this respect. It serves as a reference for the EUIPO, Benelux Office for Intellectual Property, and Intellectual Property Offices of Member States (hereinafter collectively referred as ‘MS IPOs’), User Associations, parties and representatives on the CP8 Common Practice. “
The CP8 project was launched in October 2017 after a convergence analysis uncovered significant divergences between the practices of MS IPOs in relation to the assessment of genuine use when trademarks were used in a form differing from the one registered and identified the need to harmonize the practice within the EU.
The now published CP8 document delivers a set of general principles and standards on the use of a trade mark in a form differing from the one registered by taking into account the impact of additions, omissions, and modifications of characteristics on the distinctive character of trademarks.
It also features a remarkable amount of illustrative examples to demonstrate the common standards that will apply after the implementation process, such as the following example:
The CP8 was published simultaneously on the websites of the EUIPO and the MS IPOs on 15 October 2020. It is available in all EU languages and can be found on the website of the EUIPO .
