Search by keywords. Below is a full list of keywords and explanations. Keyword. Explanations

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1 Search by keywords Many cases or documents in esearch Case Law are tagged with one or more pre-defined keywords categorising their content. This allows the user to identify relevant cases through a combination of standardised terms without the need of prior knowledge of available cases or relying on search words in the individual documents. Below is a full list of keywords and explanations. Keyword Accessory parts of the design Admissibility Adversely affected Ancillary appeal Use where there is a discussion about whether a part of a design, which is the subject of a decision, is merely an optional accessory to the design, and not an actual, protectable component of the design. Use when there is a discussion about the admissibility of an action. This keyword should only be used when there is an extended discussion about admissibility, as opposed to cases where admissibility is simply accepted or not established on the basis of a single formality, or with no discussion at all. Use when discussion about whether the circumstances of a case sufficiently adversely affected an appealing party, so that that party has standing to bring an action before the BoA/GC/CJ. Norms: 59 CR, 65(4) CR Use in inter partes proceedings, where the defendent seeks a decision annulling or altering the contested decision on a point not raised in the appeal. Norms: 8(3) BOA RP. x Author: EUIPO 1 of 31

2 Burden of proof To be assigned as a keyword when mentioned in the judgment/decision and/or when there is an issue, which requires the relevant party to convince the other party of a fact of the party s entitlement to the relief sought. This means that the party/applicant must prove each element of the claim, or cause of action, in order to recover. However, in cases of e.g. proving LOC, reputation, earlier rights and so on according to the Regulation, the party/applicant must prove there is a real or substantial possibility of such. Catalogue Change of name Claim for alteration of OHIM decision Clarity of party submission Colours of design Use where the decision maker analyses the contents of a catalogue which has been submitted as evidence and/or whether that evidence is accepted/probative. This keyword will typically be used in the context of acquired distinctiveness, proof of genuine use, and/or reputation analyses where the weight of the evidence is discussed. This term is related to other keywords: Packaging, Press articles, Promotional material, Sales figures and Survey. Use where an IP right has changed ownership and that this change had an effect on the outcome of the case which was discussed. Norms: 26 CIR Use where a party made a claim for alteration of an OHIM decision and the BOA/GC/CJ assessed this claim in the document and made a decision on it. Do not use for the issue of alteration of a registered mark. Use where the clarity of a submission was discussed and decided upon. Use where there is a discussion on whether a colour is part of the protected design. Author: EUIPO 2 of 31

3 Competence of the Boards Complementary evidence Complementary goods and services Component part of complex product Conceptual dissimilarity Conceptual identity Conceptual similarity Use for decisions where the ability of the Boards of Appeal to reexamine lower instance decisions is discussed. Norms: 64(1) CR. Where the issue of whether evidence submitted after initial observations is considered 'complementary', and thus acceptable for consideration, is discussed. In the context of comparing goods and services, this keyword is used when a discussion in the decision regarding whether or not particular goods/services are complementary. This keyword can be used in both situations, so long as reasons for why certain goods/services are or are not complementary. Use where there is a discussion about a complex product which is the subject of a design matter. Use this keyword only where there is a discussion as to a component of that product, specifically where protectability of that component is at issue. Norms: 3(c), 4(2), 110(1) CDR. Used in the context of a LoC analysis where two marks are found to be conceptually dissimilar and the reasoning for that finding is provided in the decision. Norms: 8(1)(b) CR. Used in the context of a LoC analysis where two marks are found to be conceptually identical and the reasoning for that finding, specifically regarding the requirements for finding identity (as opposed to mere similarity) is provided in the decision. Norms: 8(1)(b) CR. Used in the context of a LoC analysis where two marks are found to be conceptually similar and the reasoning for that finding is provided in the decision. Norms: 8(1)(b) CR. Author: EUIPO 3 of 31

4 Conflict of design with copyright Conflict of design with other right Conflict of design with prior design Conflict of design with prior trade mark Use for all design decisions where the earlier right which is the basis of the decision is a copyright. Use for all design decisions where the earlier right which is the basis of the decision is a right other than a design right, copyright, or trade mark. Use for all design decisions where the earlier right which is the basis of the decision is a design right. Use for all design decisions where the earlier right which is the basis of the decision is a trade mark. Use when there is discussion about whether a mark applied for is contrary either to public policy or to principles of morality, followed by a decision on that issue. Norms: 7(1)(f) CR and 9 CDR. Contrary to public policy or principles of moralit x Use only when a copyright is used as the basis for an application of declaration of invalidity. This keyword is used when there is discussion and a decision on the issue of whether a copyright is sufficient for invalidating a mark, regardless of which way that x Copyright decision goes. Norms: 53(2)(c) CR. This keyword is applied to decisions where there is discussion as to whether or how to grant: 1) apportionment of costs; 2) fixing of costs; 3) review of costs; and/or 4) settlement of costs. This keyword is not applied where the decision maker only asserts one of the Costs previous four without discussing it. Counterclaim For decisions where a counterclaim was raised. Author: EUIPO 4 of 31

5 Current account Database printout Declaration Keyword For decision documents which discuss the functioning (or lack thereof) of the current account system at OHIM where it affected a decision on a legal or financial issue. This keyword is not used where it is only mentioned that an applicant used a current account to make payments or receive refunds. Use this keyword in the context of substantiation of earlier rights, where a database printout was assessed by the decision maker as to the weight of the database printout in substantiation. Use in the context of assessing evidence, when some type of written declaration (e.g. affidavits) is discussed by the decision maker as to whether it is valid and/or probative. Deficiencies of RCD application Defiencies of RCD invalidity application Definition of a design Density of design corpus Use where there is a discussion about a deficiency in an RCD application which significantly affects the outcome of the decision. Use where there is a discussion about a deficiency of an RCD invalidity application which significantly affects the outcome of the decision. Use where the definition of a design itself is discussed, and this discussion has a significant effect on the outcome of the decision. Norms: 3(a), 25(1)(a), 47(1)(a) CDR. Use in a design decision where there is a discussion about individual character and that discussion analyses the existing design corpus, and its density, to determine whether the overall impression of the design in question is sufficiently different from that corpus. Related keywords: 'Freedom of designer'. Norms: Recital 14 CDR. Author: EUIPO 5 of 31

6 Disclaimer in representation of design Disclosure outside the EU Disclosure under confidentiality Disclosure within the EU Dissimilarity of signs Use where there is a discussion about whether a disclaimer in an RCD is valid and/or what the effects of the disclaimer is. Use only where the disclaimer issue is significant or is related to a significant issue in the design decision. Norms: 25(6) CDR. Use where disclosure of a design outside of the EU is discussed and has a significant effect on the design decision. Often, this type of disclosure occurs in the context of an international trade show or convention. Related keywords: 'Disclosure within the EU', 'Disclosure under confidentiality'. Norms: 7, 15(3), 44(1) CDR. Use where a disclosure of the design in question was made and the decision-maker analyses a claim that the disclosure was made under a confidentiality agreement. This keyword should only be used where the outcome of this issue has a significant effect on the decision. Related keywords: 'Disclosure outside the EU', 'Disclosure within the EU'. Norms: 7(1), 11(2) CDR. Use where disclosure of a design inside the EU is discussed and has a significant effect on the design decision. Often, this type of disclosure occurs in the context of an international trade show or convention. Related keywords: 'Disclosure outside the EU', 'Disclosure under confidentiality'. Norms: 7, 15(3), 44(1) CDR. To be used in the context of a LoC analysis where the signs are found to be dissimilar. If the signs are found to be dissimilar, use keyword 'Similarity of the signs'. Use 'Identity of the signs' for cases where the boundaries between identity and similarity are discussed in detail. Norms: 8(1)(b) CR. Author: EUIPO 6 of 31

7 Dissimilarity of the goods and services Distortion of facts or evidence Document from third party Enhanced distinctiveness Entitlement to appeal Essential element to be translated To be used in the context of a LoC analysis where the goods/services are found to be dissimilar. If the goods/services are found to be similar, use keyword 'Similarity of the goods and services'. Use 'Identity of the goods and services' for cases where the boundary between identity and similarity are discussed in detail (refer to scope notes). Norms: 8(1)(b) CR. To be used when mentioned in the decision/judgment or when there is an issue related to a party claiming distortion of facts or evidence (misrepresentation) in a court case. Use in the context of the analysis of evidence, when the decision maker assesses the validity of a document received from a third party, as opposed to evidence which is sourced from a party to the proceedings. To be used when the decision assesses a claim to enhanced distinctiveness. 8.1.b (Not to be used if enhanced distinctiveness is not assessed.) Use when there is an assessment of a party's right to an appeal, typically in the case that this right is contested by a party. Do not use when a decision maker merely finds that an appellant has a right to an appeal without a discussion as to the legal right itself. Norms: 59 CR. Use within the context of issues related to the effects of the language of proceedings. Use when the decision maker analyses whether evidence not translated should have been translated and why. x x Author: EUIPO 7 of 31

8 Evidence of use Keyword Examination of facts ex officio Use where evidence of use of a mark (genuine use, acquired distinctiveness, famous marks) is analysed by the decision maker. For design cases, use where evidence is analysed to determine whether a 'disclosure' has been made. Use whenever a lower instance's ex officio examination of facts is analysed by a decision maker. Extension of the time limit Extent of use Fax Fee Use when a decision maker analyses the issue of whether a lower instance's decision to extend or not extend a time limit is discussed. Do not use where there is only a decision on the issue without discussions as to why that decision was made. Norms: 71 CIR. Use where there is an issue regarding proof of genuine use, reputation and/or acquired distinctiveness and the decision maker assesses the extent the mark was used, usually in a quantitative sense and in terms of marketing coverage. Do not use for decisions where the issue was the use of a mark in the context of 8(4) CR ('use of more than mere local significance'). Norms: 7(3), 42(2) and 57(2) CR. Use where a fax communication is the basis of an evidence issue which is discussed. Use when financial issues are discussed, but do not use when they are only decided upon without further analysis. Financial issues include reimbursements, surcharges, fixing of costs, insufficient payments to OHIM and 'insignificant amounts'. x Author: EUIPO 8 of 31

9 Filing date Force majeure Freedom of designer Functional element Use when the filing date is an issue discussed by the decision maker in detail, for example, when the determination of a filing date is crucial for establishing whether one mark is earlier than the other. Mere mentions of a filing date where the date is not contested do not warrant use of this keyword. To be assigned as a keyword when mentioned in the judgment/decision and/or when there is an issue related to the common clause in most legal contractual matters that essentially frees both parties from liability or obligation when an extraordinary event or circumstance beyond the control of the parties, such as a war, strike, riot, crime, or an event described by the legal term such as hurricane, flooding, earthquake, volcanic eruption, etc. takes place. Use where the decision-maker analyses the freedom of a designer in the field related to the design in question in connection with either determining individual character or the scope of protection of a design. Specifically, the analysis should focus on whether that fieldspecific designer has a high or low degree of freedom to develop designs in that industry. Related keywords: 'Density of design corpus'. Norms: 6(2) CDR. Use when there is a 3D mark or design which contains an element which may be considered to be a functional component of the goods/services applied for. Only use this keyword when the decision maker has anaylsed to some extent the functionality of that element. 7(1)(e)(ii) CR; 8 CDR. Author: EUIPO 9 of 31

10 Functionality continuity Grace period Graphical representation Identity of the goods and services Identity of the signs Immaterial details To be assigned when mentioned in the judgment/decision, and/or when there is an issue of consistency in the application of the same rules between first and second instance, e.g. the OD and the BoA, GC and CJ etc. (see e.g. Case C-29/05 OHIM vs. Kaul) To be assigned where disclosure with the 12-month period under 7(2) CDR is in issue. Not to be assigned in relation to the use requirement for an earlier trade mark. Use where there is an analysis of the sufficiency of a graphical representation of a mark. Norms: 4 and 7(1)(a) CR. Use only where the difference between identical and similar goods/services is discussed in the context of a LoC analysis. Norms: 8(1)(b) CR. Use only where the difference between identical and similar signs is discussed in the context of a LoC analysis, specifically regarding the requirements for finding identity (as opposed to mere similarity) is provided in the decision. Norms: 8(1)(b) CR. Norms: 8(1)(b) CR. Use only where there is an analysis regarding the novelty of a design and whether differences between two designs are only immaterial details. The result of the analysis as to 'immaterial details' should have a significant/determinative effect on the novelty analysis. Norms: 5(2) CDR. x x x Author: EUIPO 10 of 31

11 Individual character Informed user Inspection of files Lack of reasoning Language of the proceedings Use where the decision maker engaged in a significant discussion as to whether the design in question had sufficient individual character to be protected as a Community design. Do not use where individual character was merely mentioned without being discussed (e.g. - 'the applicant for invalidity conceded in respondent's design having individual character...'). Norms: 4, 6, 85(2) CDR. Use to index a decision where the decision maker analyses and makes a decision on the definition of an 'informed user' in a design decision. Limit use of the keyword only to situations where the 'informed user' is actually discussed, and not in situations, for example, where the parties agree on who the 'informed user' is. Norms: 6(1), 10(1) CDR. Use where legal issues related to a request to OHIM for the inspection of files are analysed. Norms: CIR. To be assigned as a keyword when mentioned in the judgment/decision, and/or when there is an issue of the sound administration of the Office in relation to precisely justifying in writing a decision where the party is adversely affected e.g. failing in communicating clearly the relevant law of a decision or the main factors behind the decision or stating the facts which are considered of importance to the decision. Use where a disagreement as to the correct language of proceedings is at issue and analysed by the decision maker. Where relevant, a more specific keyword could be 'Essential element to be translated'. Author: EUIPO 11 of 31

12 Legal certainty Legitimate expectations License agreement Likelihood of confusion Matters of fact appealed to CJ Minimum degree of distinctiveness To be assigned when mentioned in the judgment/decision, and/or when there is an issue of the assurance of the unitary interpretation of law, i.e. predictability and stability of the legal system for an individual/applicant. To be assigned when mentioned in the judgment/decision, and/or when there is an issue that an applicant/individual has reasonable expectations that the legislation in effect today will remain in effect in the future and does not change, and if changed should not undermine the right created by a law during the time it was in effect (see also the vacatio legis principle). Use in the context of substantiation of earlier rights or proof of genuine use where a license agreement is analysed as to it's legal significance in relation to the party which submitted the license agreement as evidence. To be used only when the decision assesses a likelihood of confusion. Do not use in decisions which although filed under articles which include the possibility of LoC, are then resolved via other means. For example, an 8(1)(b) case where all the earlier rights are unsubstantiated; an 8(4) case where the claim is that the national law provides a LoC provision, but which is then rejected for non-use. Use where a party appealed issues of fact to the CJ and the CJ discussed the matter. Use where the decision maker analyses of whether a mark surpasses the legal requirement of 'minimum degree' of distinctiveness. Do not use if the decision maker merely states that a mark contains the minimum degree of distinctiveness without providing reasons why. x x x x Author: EUIPO 12 of 31

13 Misuse of power Modification of subject-matter before Court Multiple applications Nature of the goods and services (Misfeasance, Abus/Detournement de pouvir, Machtmissbrauch). To be used when it is mentioned in the decision/judgment or when there is an issue related to the improper or unlawful use of authority given to e.g. OHIM (as a public office). Use where a decision maker addresses changes which a party has made to the subject matter of the case at hand. A related keyword may be 'Scope of proceedings'. Assign to cases where the special requirements for multiple applications are in issue. The broader term for this keyword is 'Registration proceedings'. Norms: 27 CDR and 2 CDIR. Use where the decision maker discusses the nature of goods and services in detail. Do not use if there is only a brief mention ('we must take into account the nature of the goods and services' or 'Consumers will see the mark as only a reference to the nature of the goods/services...'). Nature of use New submission on appeal No bearing on decision Use only in cases where the issue is the question of whether the relevant sign has been shown to have been used as a trade mark, for example, in relation to proof of use (does the evidence submitted show use as a trade mark?), acquired distinctiveness, revocation for non-use, use in the course of trade. Norms: 15 CR. Use where a party has submitted additional, new evidence in a case after the first instance decision has been made, and the decision maker analyses the validity of this submission. A related keyword may be 'Scope of proceedings'. Use where the decision maker has found a procedural error, but then provides reasoning as to why that error has no effect on the outcome of the case. Author: EUIPO 13 of 31

14 Normal course of business Normal use of design Notification Novelty Obvious mistakes Ornamentation Use in design decisions in the context of an assessment of disclosure. Use only where there is significant discussion as to whether the disclosure could have reasonably been made in the normal course of business to circles specialised in the concerned sector. Norms: 7, 11(2) CDR. Use only where the decision maker assesses the normal use of a complex product in which the the design in question is incorporated. This assessment should be for the purpose of determining whether the design in question is visible during normal use of the complex product. Norms: 4(2)(a), 4(3) CDR. Use when notifications sent from OHIM or other IP offices are in question. Usually this keyword is used in situations where a party claimed to not have received a notification, and then the decision maker analyses and decides on the legal effects of the claim. Use where the issue of novelty is a significant issue in the decision, and the determination of which has a significant impact on the outcome of the case. Norms: 5 CDR. Use when the issue of whether or not a mistake is 'obvious' is discussed. This may occur in the context of linguistic errors, errors of transcription or errors in relation to publications. Norms: 43(2) CR; 53 CIR. Use where the decision maker in a design case analyses and determines whether a part of a design in question can be considered 'ornamentation' of the product which embodies the design, and is therefore protectable. Norms: 3 CDR. Author: EUIPO 14 of 31

15 Overall impression Ownership of IP right Packaging Patent Phonetic dissimilarity Use to index a decision where the decision maker analyses the overall impression a design produces on the informed user within the context of an analysis of individual character. Limit use of the keyword only to situations where the main issue discussed is the overall impression of the design(s) at issue; do not use merely where there is an issue of individual character but there is little or no discussion specifically related to the overall impression. Norms: 6(1), 10(1) CDR. Use when the ownership of a relevant IP right is in question and the decision maker assesses this issue, for example, by looking at evidence of ownership and making a decision based on that evidence. This is related to the keyword 'Substantiation of earlier right'. Use where the decision maker analyses product packaging which has been submitted as evidence and/or whether that evidence is accepted/probative. This keyword will typically be used in the context of acquired distinctiveness, proof of genuine use, and/or reputation analyses where the weight of the evidence is discussed. This term is related to other keywords: Catalogue, Press articles, Promotional material, Sales figures and Survey. Use when a patent is cited by a party to the proceedings as an earlier right, for example, as the basis for a cancellation. Used in the context of a LoC analysis where two marks are found to be phonetically dissimilar and the reasoning for that finding is provided in the decision. Norms: 8(1)(b) CR. x x x Author: EUIPO 15 of 31

16 Phonetic identity Phonetic similarity Place of use Press articles Principle of legality Use only where the difference between phonetically identical and similar signs is discussed in the context of a LoC analysis, specifically regarding the requirements for finding identity (as opposed to mere similarity) is provided in the decision. Norms: 8(1)(b) CR. Used in the context of a LoC analysis where two marks are found to be phonetically similar and the reasoning for that finding is provided in the decision. Norms: 8(1)(b) CR. Use where there is an issue regarding proof of genuine use, reputation and/or acquired distinctiveness and the decision maker assesses the extent the mark was used, usually in a geographical sense. Do not use for decisions where the issue was the use of a mark in the context of 8(4) CR ('use of more than mere local significance'). A related keyword is 'Extent of use'. Norms: 7(3), 42(2) and 57(2) CR. Use where the decision maker analyses press articles which have been submitted as evidence and/or whether that evidence is accepted/probative. This keyword will typically be used in the context of acquired distinctiveness, proof of genuine use, and/or reputation analyses where the weight of the evidence is discussed. This term is related to other keywords: Catalogue, Packaging, Promotional material, Sales figures and Survey. To be assigned as a keyword when mentioned in the judgment/decision, and/or when there is an issue related to the acts and in particular to the legally-binding decisions of the Office as a public administration body, which always must be warranted in the law or regulation. Author: EUIPO 16 of 31

17 Priority Promotional material Proof of use Proprietor consent Purpose of the goods and services Use where a priority claim is analysed by the decision maker. Do not use this keyword with regards to the determination of an earlier right in inter partes proceedings (refer instead to 'Substantiation of earlier right'). Norms: 29 CR. Use where the decision maker analyses promotional material which has been submitted as evidence and/or whether that evidence is accepted/probative. This keyword will typically be used in the context of acquired distinctiveness, proof of genuine use, and/or reputation analyses where the weight of the evidence is discussed. This term is related to other keywords: Catalogue, Packaging, Press articles, Promotional material, Sales figures and Survey. Use when there is a extended analysis of whether or not a party has sufficiently met the burden of proving genuine use. Do not use when the proof of use issue is resolved by a means other than a full analysis (i.e. - request for proof of use was insufficiently formulated). Norms: 42(2) and 57(2) CR. Use to indicate an analysis of whether an IP proprietor gave adequate consent to use a mark, for example, via license agreement. This is related to proof of genuine use ((42(2) CR), acquiescense (54 CR) and bad faith (52(1)(b) CR). Use this keyword in the context of an assessment of the goods/services within a LoC analysis, where a similarity or dissimilarity would have an effect on the LoC outcome. Do not use where the decision maker merely mentions that the purposes are similar/dissimilar without much explanation ('the purpose of applicant's large snowboards and the opponents medium sized snowboards is the same...'). x x Author: EUIPO 17 of 31

18 Quality of the goods and services Ratio legis Reasons of equity Reimbursement Relevant territory Renewal Representation of a design Representative Reputation Request for proof of use Use where the quality of the goods and/or services is discussed by the decisions maker. To be assigned when mentioned in the judgment/decision, and/or when there is an issue of the reason behind or for a law/regulation, the policy reason or underlying purpose for a specific norm, rule, treaty provision, act of legislation etc. To be assigned when mentioned in the judgment/decision, and/or when there is an issue of awarding an applicant in a case something out of fairness which is not a money award. Use where the decision maker analyses and makes a decision on a reimbursement to be given by OHIM. Use when there is an analysis leading to a determination of what geographical area is considered 'relevant territory' in the context of a reputation analysis. Related keywords are 'Place of use', 'Use in a third country', and 'Well-known marks'. Indicates that a renewal of a C or other IP right was an issue which was analysed and decided upon. Norms: 47 CR. Use where the representation of a design is a significant issue and discussed by the decision maker. Norms: 35(1)(c) CDR. Use this when there is an issue as to the professional representative, or lack thereof, of a party of the proceedings. Norms: 92 and 93 CR. To be used when the decision assesses a claim to reputation. 8(5) (Not to be used if reputation not assessed.) To be used when the decision assesses the merits of the request for proof of use (e.g. request made but not valid, request not explicit, filed late, etc.). (Not to be used when request for proof of use is accepted and proof of use is assessed.) x x x Author: EUIPO 18 of 31

19 Res judicata Restitutio in integrum Revocation of decision Right of defence Right to be heard To be assigned as keyword when mentioned in the judgment/decision, and/or when there is an issue on an identical case with the same parties already been decided by another court with concurrent power (see e.g. cases T-505/14 and T-378/13 ). To be used when mentioned in a decision/judgment or if there is an issue of e.g. OHIM or a court rescinding or annulling a decision and thereby restoring the applicant/parties to their previous situation (before the decision/judgment). Use to indicate a case which assesses and decides as to whether another decision may be revoked by OHIM, for example, in the case of an obvious procedural error. Norms: 80 CR. To be assigned as a keyword when mentioned in the judgment/decision, and/or when there is an issue related to the right to defence in procedures vis-à-vis the Office or the courts, including the right to a fair handling of evidence and admission of proof, the right to review decisions and appeal before carrying out the decision/judgment To be assigned as a keyword when mentioned in the judgment/decision, and/or when there is an issue on the right to be heard in a legal proceedings vis-à-vis the Office or the courts. It is often characterised as a component of rights of the defence but it has a wider ambit requiring the Office as a public administration body to provide an individual or applicant with an opportunity to state his or her case before taking a decision. Author: EUIPO 19 of 31

20 Sales figures Scope of proceedings Similarity of the goods and services Similarity of the signs Spare part Use where the decision maker analyses sales/turnover figures which have been submitted as evidence and/or whether that evidence is accepted/probative. This keyword will typically be used in the context of acquired distinctiveness, proof of genuine use, and/or reputation analyses where the weight of the evidence is discussed. This term is related to other keywords: Catalogue, Packaging, Press articles, Promotional material and Survey. This keyword is related to procedure, specifically, when the decision maker analyses whether a particular issue/argument is within the scope of its jurisdiction. To be used in the context of a LoC analysis where the goods/services are found to be similar. If the goods/services are found to be dissimilar, use keyword 'Dissimilarity of the goods and services'. Use 'Identity of the goods and services' for cases where the boundary between identity and similarity are discussed in detail (refer to scope notes). Norms: 8(1)(b) CR. To be used in the context of a LoC analysis where the signs are found to be similar. If the signs are found to be dissimilar, use keyword 'Dissimilarity of the signs'. Use 'Identity of the signs' for cases where the boundaries between identity and similarity are discussed in detail. Norms: 8(1)(b) CR. Use where there is a discussion about whether the product which embodies the design right in question is in fact a spare part and consequently whether that product is protected as a Community design. Norms: 20(2)(b) CDR. Author: EUIPO 20 of 31

21 Statement of grounds Substantial procedural violation Substantiation of earlier right Survey Suspension of the proceedings Suspensive effect Use where the decision maker analyses whether a statement of grounds submitted by a party was adequately made and/or timely filed. Do not use this keyword where the decision merely states that a statement of grounds was submitted. Norms: 60 CR. Use in cases where the decision maker assesses whether a procedural rule has been violated and to what extent that violation is a substantial one. Use where the substantiation of an earlier right is analysed by a decision maker. Typically this will involve an assessment of evidence such as database printouts from official IP offices, registration certificates and recordals of IP transfers. Use where the decision maker analyses the contents of a market survey or opinion poll which has been submitted as evidence and/or whether that evidence is accepted/probative. This keyword will typically be used in the context of acquired distinctiveness, proof of genuine use, and/or reputation analyses where the weight of the evidence is discussed. This term is related to other keywords: Catalogue, Packaging, Press articles, Promotional material and Sales figures. Use only where the decision maker analyses the validity of a suspension of the proceedings. Do not use if there has only been mention of a suspension of proceedings in a lower instance. To be used when mentioned in the decision/judgment or when it is an issue as to whether (or not) a contested decision has no legal effect until the appeal has been resolved. Author: EUIPO 21 of 31

22 Technical function of design Technical result Transfer of IP right Translation of evidence Unregistered Community design Use by another undertaking Use where there is an analysis as to whether the design, or part of the design, in question is dictated by its technical function. Use only where the result of that analysis is significant/determinative on the issue of whether that design or part of design is protected under Community Design law. Norms: 8 CDR. Use only in the context of 7(1)(b) CR or 7(1)(e)(ii) analyses where the decision maker discusses whether or not a certain shape is necessary to achieve a function; that a shape is necessary for a technical result. Do not use only because the decision mentions 'technical' in the decision. Use where a decision contains a discussion about the transfer of any IP right and the validity of that transfer has a significant effect on the outcome of the decision. Do not use where there is only a mere mention of a transfer of a right, for example, where the right was merely transferred during the course of the proceedings, but that transfer had no effect on the outcome of the decision itself. Use where evidence relating to use (proof of use, enhanced distinctiveness, acquired distinctiveness, reputation, etc.) has not been translated and the lack of that translation is in issue. Use for decisions where an Unregistered Community design right forms the basis of a proceeding, usually in an invalidity proceeding. Use for cases where it is an issue whether the use has been performed by the proprietor of the marks or by another undertaking, and for the issue of whether this has been made with the proprietor's consent. Author: EUIPO 22 of 31

23 Use in third country Use not as registered Utility model Use in the context of proof of use, acquired distinctiveness or reputation analyses when supporting evidence concerns countries outside of the EU. This keyword is related to 'Place of use' and 'Relevant territory'. Use only in the context of proof of genuine use where the evidence of the proof of use contains marks which are not identical to the mark as registered and the decision maker analysed whether this difference would still support proof of genuine use. Norms: 15(1)(a) CR. Use where a utility model concept is in the reasoning part of the decision. x x Visible features of design Visual dissimilarity Visual identity Visual similarity Use when there is a discussion about the visibility of a component part of a complex design. This typically occurs where there is an issue as to protectability of a design where that design is in whole or in part not visible during the normal use of the product which incorporates the design in question. Norms: 4(2)(a) CDR. Used in the context of a LoC analysis where two marks are found to be visually dissimilar and the reasoning for that finding is provided in the decision. Norms: 8(1)(b) CR. Use only where the difference between visually identical and similar signs is discussed in the context of a LoC analysis, specifically regarding the requirements for finding identity (as opposed to mere similarity) is provided in the decision. Norms: 8(1)(b) CR. Used in the context of a LoC analysis where two marks are found to be visually similar and the reasoning for that finding is provided in the decision. Norms: 8(1)(b) CR. Author: EUIPO 23 of 31

24 Well-known facts need no evidence Abbreviation Acquiescence Acronym Agent Bad faith Use where a decision maker refers to facts not entered into evidence, and the decision maker supports this action on the basis that the facts referred to are well-known and thus need no evidence for support. To be used when a mark consists of a shortened version of a word(s) and a discussion in the document is made about whether or not the relevant public would view the mark or part of the mark as a shortened version of a particular word. Do not use if only the legal form of the company is an abbreviation (e.g. Ltd.). Norms: 7(1)(b) and (c) CR. To be used when mentioned in a decision/judgment or if there is an issue of a tacit agreement or a consent inferred from silence from a party/parties, e.g. if the competitor is not filing any objection in case of a trademark or design infringement. To be used when a mark consists of an arrangement of letters derived from the initial letter of each word in a phrase (e.g. OHIM, EPO or CEO). A discussion in the document should be made about whether or not the relevant public would view the mark or part of the mark as an acronym. Do not use if only the legal form of the company is an abbreviation (e.g. GmbH). Norms: 7(1)(b) and (c) CR. Use when there is discussion about whether or not a person/entity was considered to be agent in relation to one of the parties. Norms: 8(3) and 11 CR. To be used when mentioned in a decision/judgment or if there is an issue related to intentional deception, dishonesty or failure to meet an obligation or duty. Norms: 52(1)(b), 54(1), 111(2) CR x x Author: EUIPO 24 of 31

25 Coexistence of trade marks Collective mark Colour mark Common element Company name Complex mark Deceptive element Descriptive element Detriment to earlier mark Use where a party to the proceedings invoked the argument that prolonged mutual coexistence of an earlier and contested mark demonstrates a lack of confusion. Do not use this for discussions about agreements of mutual coexistence of marks. To be used when one or more of the relevant trade marks consists of a collective mark. For use where the marks at issue are either a single colour mark or comprised of a combination of colours. This keyword is not used for figurative marks which merely contain a colour claim. Used where elements are compared between two trademarks and where the decision maker determines certain elements are similar or dissimilar, and where that determination has an effect on the outcome of the LoC issue. Keyword for decisions where the use of a company's name is assessed for whether the contested mark was 'used in the course of trade'. Related norms: 8(4), 9 and 12 CR. Use where one of the marks at issue is a figurative mark which contains both a figurative element (shapes, figures, pictures) and alphanumeric characters. Use when an element of a mark is assessed as to whether it is deceptive. Norms: 7(1)(g) CR. Use when an element of a mark is assessed as to whether it is descriptive. Norms: 7(1)(c) CR. Use in the context of marks with reputation, where the decision maker assesses whether there has been detriment to an earlier mark. Detriment may include dilution of distinctiveness, tarnishment of reputation and/or 'blurring'. Norms: 8(5) and 9(1)(c) CR. Author: EUIPO 25 of 31

26 Dilution of distinctiveness Distinctive element Distinctiveness acquired by use Domain names Dominant element Due cause To be used when mentioned in a decision/judgment or if there is an issue related to a lessening of value or distinctiveness that is caused by use of the mark by another and which creates potential blurring and confusion on the part of the consumers. Use when an element of a mark is discussed as to whether it is distinctive or not. Do not use this keyword where the decision maker merely finds that an element is distinctive without providing reasoning. Norms: 7(1)(b) CR. Use when there is an extended analysis of acquired distinctiveness (i.e. assessment of evidence, time of use, reasons for non-use, distinctiveness, etc.). Do not use when a decision on the issue of acquired distinctiveness is made on the basis of a formality. Norms: 7(3) and 52(2) CR. Use when a sign is or contains a domain name, and the relevance of the top-level domain (i.e..com,.net,.org, etc.) is discussed by the decision maker. The key use for this keyword is for indexing decisions which discuss what factors are used to determine if an element is 'dominant' or not. It is used where an element of a mark(s) is assessed, where the decision maker determines whether certain elements are dominant and where that determination has an effect on the outcome of the AG or RG issue. To be used when mentioned in a decision/judgment or if there is an issue whether the prior use of a similar (or identical) sign with a reputation was in good faith (or not). Author: EUIPO 26 of 31

27 Emblem Ending of mark Figurative element Figurative trade mark Free movement of goods Function of trade mark Geographical origin Gustatory mark Used in the context of assessing a mark as to whether it is or contains an emblem, badge, or escutheon as it relates to absolute grounds. Norms: 7(1)(h) and 7(1)(i) CR; 6ter Paris Convention. Use where the importance/significance of the ending of a mark is discussed. Do not use this keyword if the decision maker merely provides a cursory comparison of the endings of the mark (e.g. 'the endings are similar because they are visually and phonetically similar' would be insufficient if the decision maker does not discuss any more than that). Use when a figurative element is singled out and discussed by the decision maker (also see 'Dominant element' and 'Distinctive element'). To be used when one or more of the relevant trade marks is a figurative mark. Use where the General Court or Court of Justice discusses the free movement of goods in significant part, relative to the whole judgment. Use for decisions where the issue of whether the use of a mark, or the mark itself on the basis of it's composition, is capable of functioning as a trade mark. Use in the context of absolute grounds where the mark is considered to be an indication of geographical origin. Norms: 7(1)(g), 7(1)(j) and 7(1)(k) CR. Use where the mark in question is a gustatory or 'taste' mark. Norms: 4 and 7(1)(a) CR. x Author: EUIPO 27 of 31

28 International registration Laudatory mark Letter mark Media title Use in a trade mark decision where one of the marks in question is an international registration and there is a significant issue that arises only due to the fact that that mark is an international registration (seniority issues, for example). Use where the decision maker discusses whether a mark is considered laudatory, and the effects that determination would have on distintiveness and/or descriptiveness. Norms: 7(1)(b) and (c) CR. To be used when one or more of the relevant trade marks consists of a single letter mark. Use where there is a discussion about a mark which acts primarily as a title to some format of media. To be used when one or more of the relevant trade marks consists of Misspelled word mark words which could be considered mispelled. E.g. CRYOTEK. To be used when earlier rights include one or more non-registered Non registered trade mark trade marks. Numerical mark Use when the mark consists in whole or in part of a number. To be used when one or more of the relevant trade marks consists of Olfactory mark a smell mark. To be used when mentioned in a decision/judgment or if there is an issue mainly in UK cases related to infringing a design or a trademark (riding on the coat-tail of) or offer for sale (goods and Passing off services) with intent to deceive the consumers. Use where at least one of the marks at issue consists in whole or in Personal name mark part of a personal name. Article 7( To be used when one or more of the relevant trade marks consists of Position mark a positional mark. Author: EUIPO 28 of 31

29 Restriction of the list of goods and services Use where the validity of an amendment to the list of claimed goods and services is assessed by the decision maker. Revocation grounds Seniority Shape of the product Sign of mere local significance Slogan mark Sound mark Use for decisions which contained an analysis of the validity of a revocation ground, as well as defenses claimed by the other party such as having reasons for non-use of a mark. Norms: 51 CR. Use when the validity of a seniority claim is assessed. Do not use when the decision maker merely mentions that one of the marks benefits from a seniority claim. Use this to indicate an in depth analysis of a 3D/shape mark. When using this mark, also consider the more specific keywords 'Substantial value', 'Technical result' and 'Functional element'. Norms: 7(1)(b), 7(1)(e)(i)-(iii) CR. This is used only in the context of an Article 8(4) CR analysis where the decision maker assesses whether the use of an unregistered right is considered to be of more than mere local significance. Typically this involves the assessment of evidence as to the geographical extent of the use of the mark in question. Norms: 8(4) CR. To be used when one or more of the relevant trade marks consists of a slogan. To be used when one or more of the relevant trade marks consists of a sound mark. Author: EUIPO 29 of 31

30 Specialised public Standard letter Substantial value Keyword Tarnishment of reputation Use where there is an analysis of whether a group or subset of a group of relevant consumers is considered a 'specialised public'. This keyword may be used so long as the decision maker states that a group is specialised and why. For example: 'Because the relevant consumers are doctors, and doctors have long been held to be considered a specialised public...' Use where the decision maker analyses the contents and/or significance of a standard OHIM (or other IP office) communication. Use in the context of 3D/shape marks where the shape is assessed for whether it comprises the substantial value of the goods. Norms: 7(1)(e)(iii) CR. To be used when mentioned in a decision/judgment or if there is an issue in relation to damaging or ruining the good reputation of a known trademark or design by unauthorised use. To be used when one or more of the relevant trade marks consists of Three-dimensional mark a three dimensional mark. Trade name To be used when earlier rights include one or more trade names. x Use where the decision maker considers whether the typographical Typographical element element of a trade mark influences the assesment. Unfair advantage Used in the course of trade To be used when the decision assesses a claim of unfair advantage. x This is used only in the context of an Article 8(4) CR analysis. It is not used in the context of 7(1)(d) CR issues. Specifically, use this keyword where there is an analysis as to whether the type of use (e.g. as a source indicator, labels on goods, business name, etc.) constitute sufficient 'use in the course of trade'. Author: EUIPO 30 of 31

31 Weak element Weak trade mark Well-known trade mark The key use for this keyword is for indexing decisions which discuss what factors are used to determine if an element is weak or not. It is used where an element of a mark(s) is assessed, where the decision maker determines whether certain elements are weak and where that determination has an effect on the outcome of the AG or RG issue. To be used when one or more of the relevant trade marks consists of a weak mark. Use where the decision contains an assessment of whether a mark is well-known. Norms: 8(2)(c) CR in the sense of 6bis Paris Convention. Author: EUIPO 31 of 31