Family of trade marks

A family of trade marks, or series of trade marks, is a group of trade marks belonging to the same proprietor and built around a common element, often a prefix or a suffix, which the public associates with a single origin. Once established, it may increase the likelihood of confusion with a later sign reproducing that element, as the public may see it as a new variation of the series. The notion derives from case law and applies both before the offices and before the infringement court.

Conditions for recognising a family

The Court of Justice of the European Union makes the argument subject to two cumulative conditions. The proprietor must first prove use of a sufficient number of trade marks in the series, since mere registrations cannot create in the public’s mind the perception of a family. The contested sign must then display characteristics capable of linking it to the series, in particular the reproduction of the common element in a comparable position and construction.

The common element and its distinctiveness

The common element must be distinctive in itself. A prefix that is descriptive or customary in the sector cannot found a family, since the public does not see it as an indication of origin. The strength of the argument also depends on the coherence of the series, the reputation of its variations and the proximity of the goods and services concerned, assessed under the principle of speciality.

Families of trade marks in litigation

The argument is raised in opposition proceedings, invalidity actions and infringement actions. It requires actual use of several trade marks in the series to be demonstrated, which calls for a well documented file and should not be confused with the proof of use due for each trade mark when requested. It does not dispense with comparing each sign individually, which remains the starting point of the analysis, but it can establish a confusion that a bilateral comparison alone would not have revealed.

Key points

A family of trade marks strengthens the protection of the common element, provided that several trade marks in the series are actually used and that the element is distinctive. Registrations alone are not enough. Proprietors should build a coherent filing policy around a root and archive evidence of use for each variation. Applicants for a new sign should check whether the element they reproduce belongs to a series used on the market.

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This glossary entry is general in scope and does not constitute legal advice.

Dhenne Avocats is a patent litigation firm. Matters outside that field, such as trade marks, designs, copyright and IT contracts, are handled by practitioners the firm works with regularly, and by the firm itself when they arise in a patent dispute.

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