[gnso-rpm-wg] Additional notes on stylized and composite marks - Deloitte's guidelines

[Mary Wong]

Dear all,

Following up on the Working Group call that just concluded, and on the topic of “stylized marks” and “composite marks” (both phrases used here as defined in the Reference Guide that was circulated along with the Open TMCH Questions poll), staff went back to the TMCH Guidelines that were issued by Deloitte. Here are a few notes which we hope the Working Group will find helpful.

Question: Does Deloitte accept into the TMCH “stylized marks” (i.e. marks comprised only of text but where the font is stylized) and “composite marks” (i.e. marks comprised of text and a design element such as pictures or graphics)?

(1) It would appear that Deloitte considers what the Working Group is calling “stylized marks” to be potentially within the scope of the TMCH, as falling within the category of marks that exclusively consist of letters, words, numerals and/or special characters:


  *   In Section 5.2.1 of the TMCH Guidelines (trademarks “exclusively consisting of letters, words, numerals and/or special characters”), the first example cited is the Dealsafe mark, registered as a composite mark (more accurately called in the EU a “figurative mark with letters”) in the EU. It is this EU registration that Deloitte uses as an example of this category of marks (see Page 24 of the TMCH Guidelines: http://www.trademark-clearinghouse.com/sites/default/files/files/downloads/TMCH%20guidelines%20v1.2_0.pdf).


  *   Because the test used by Deloitte for such marks is that “the recorded name of the mark is an identical match to the reported name as long as all characters are included in the Trademark Record provided to the Clearinghouse, and in the same order in which they appear on the Trademark certificate”, Deloitte notes that the recorded name of the mark in this example is DealSafe.

(2) It would also appear that Deloitte accepts some “composite marks”, as marks that do “not exclusively consist of letters, words, numerals, special characters”, if they fulfil certain criteria:


  *   As John McElwaine noted in the AC chat during the call, Deloitte will only accept these marks if they have the following characteristics:
The recorded name of the Trademark is an identical match to the reported name as long as the name of the Trademark includes letters, words, numerals, keyboard signs, and punctuation marks (“Characters”) that are:

  *   predominant; and
  *   clearly separable or distinguishable from the device element; and
  *   all predominant characters are included in the Trademark Record submitted to the Clearinghouse in the same order they appear in the mark.

The point has been made previously in this Working Group that Deloitte’s determination of which “composite marks” are accepted into the TMCH may require some form of judgment on Deloitte’s part. Staff expresses no opinion on this point, but we hope that these examples facilitate the Working Group’s discussions on these matters, since it appears that there is no basic prohibition against either “stylized” or “composite” marks in the current operation of the TMCH.

Finally, we could not find any indication in Deloitte’s guidelines as to whether a trademark holder has to specify the fact that part or all of the text portion has been disclaimed as part of a trademark registration, and what Deloitte’s rule or procedure is in respect of such disclaimers.

As we are not experts in the TMCH operations, if the above notes are erroneous in any way, we will be grateful to have them corrected.

Thanks and cheers
Mary
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