The National Directorate of Industrial Property under the Ministry of Industry, Energy and Mining of Uruguay (DNPI) has published a practice paper today on the impact of non-distinctive/weak components of trade marks in the examination of llikelihood of confusion (relative grounds for refusal).
The DNPI is the first Latin American IP office to find common grounds with the criteria listed under the Common Communication (CP5) — Relative grounds of refusal - Likelihood of confusion (impact of non-distinctive/weak components). This achievement was possible thanks to the joint efforts and collaborative work carried out by the DNPI and the EUIPO within the framework of the IP KEY Latin America project, directed by the European Commission and implemented by the EUIPO.
The Practice Paper provides a clear and comprehensive explanation of the principles on which the practice is based, which will be generally applied by the DNPI and the IP offices of the European Union Intellectual Property Network (EUIPN).
The publication of this practice paper seeks to increase transparency, legal certainty and predictability for the benefit of the users and examiners of the IP offices involved. It is intended to be a reference for IP offices, users of the EU and Uruguayan IP systems, and other interested party. It also aims to cover a majority of cases.
With this in mind, the Practice Paper has been made publicly available in Spanish and English. Both versions can be found below. The document is divided into two parts: the first part summarises the criteria, while the second provides a complete explanation of the specific criteria applicable in each case.
The documents are available here:
With a view to clarifying examination practices, the DNPI published another two practice papers in May 2020 and June 2021. They focus on the examination of absolute grounds for refusal for figurative marks with purely descriptive/non-distinctive words and the graphic representations of designs, respectively.