The OHIM recently published some principles of the common practice distinguishing the role of non-distinctive elements for the assessment of likelihood of confusion. The OHIM cites real examples of trademarks that enable both applicants and opponents to assess their likelihood of success before starting the application procedure or challenging a Community trademark registration.

In order to give greater legal certainty to Community trademark applicants and opponents alike, the OHIM has established principles of common practice that clarify the importance of both non-distinctive elements and those which are non-distinctive components for assessing the likelihood of confusion.

The criteria used to establish distinctiveness are the same as those followed in the examination on absolute grounds (examination prior to acceptance of a trademark, which among others, assesses whether it describes a trade mark as opposed to the products or services it intends to designate, whether it makes mention of their origin, etc.) as well as making a global assessment of the trademark. 

Obviously, when the common elements are non-distinctive there is no likelihood of confusion except if the remaining figurative or word elements give the trademarks an overall similar impression. One example is the case of CRE-ART versus PRE-ART for art gallery services.

When marks share a component with a low degree of distinctiveness, their similarity does not mean there is a likelihood of confusion, unless the other components of the trademark are the same or have weak visual impact.

The OHIM cites examples where there is a likelihood of confusion between the earlier mark COSMEGLOW and the later mark COSMESHOW for cosmetics in Class 3. However, it did not find likelihood of confusion in the case of DURALUX versus VITALUX for cosmetics in class 44.

Likelihood of confusion must be assessed on a case-by-case basis to determine the likelihood of success of an opposition (or invalidity action), in order to establish the risks of filing the action and its associated costs in advance.