A recent change in practice has implications on the scope of protection afforded to black and white marks registered in the UK and under the CTM system.

Previously, a trade mark application for a mark filed in black and white was considered to cover all possible colour variations, giving the broadest protection possible. However, this has changed, following the European Trade Mark and Design Network issuing a document called the Common Communication on the Common Practice of the Scope of Protection of Black and White Marks (“Common Practice”) on 15 April 2014.

Following the Common Practice, many trade mark offices across the European Community intend to interpret black and white marks differently in future. This change in practice may have significant impact on opposition and invalidity proceedings, on priority claims, and on whether a proprietor can prove genuine use of their mark.

THE PRINCIPLES OF IDENTITY BETWEEN MARKS

Two trade marks are considered to be identical where the later mark reproduces the earlier mark without any modification or addition, or where, viewed as a whole, the later mark contains differences so insignificant that they may go unnoticed by the average consumer.

The new Common Practice states that a black and white mark and a colour mark will only be considered to be identical if colour is an insignificant difference that a reasonably observant consumer would only notice upon side by side examination. It seems that a black and white mark will usually not be identical to the same mark in colour. The use of colour would need to be negligible to only be noticed on side by side examination.

The examples below, taken from the Common Practice itself, demonstrate how the principles above will be applied. The following marks would be considered to be identical, as any differences between them are insignificant:

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However, the following marks would be seen as having significant differences, and would therefore not be considered identical:

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IDENTITY BETWEEN MARKS IN OPPOSITION AND INVALIDITY PROCEEDINGS

In the vast majority of cases, the changes outlined in the Common Practice would not have a significant impact on the eventual outcome of an opposition or invalidity action, as the two marks would still be considered similar. However, it is likely to impact the appropriate grounds of opposition or invalidity, and the ways in which an opposition or invalidity action is argued.

IDENTITY FOR THE PURPOSE OF PRIORITY CLAIMS

In some cases, applicants may wish to file an application for a colour mark in the UK or at the CTM Office (known as OHIM), whilst claiming priority from an earlier filed black and white mark in another territory. However, according to the new Common Practice, to claim priority, marks should now be the same in the strictest possible meaning.

This means that if the priority mark claims black and white, or is depicted in black and white, and the application is filed in a colour, the marks will not be identical and the priority claim will be rejected (unless the difference created by the colour change is insignificant).

GENUINE USE OF A BLACK AND WHITE MARK

For the purposes of proving use of an earlier mark in oppositions, invalidity proceedings, and non-use cancellation or revocation actions, genuine use of a trade mark can include use in a form which does not alter what makes the mark distinctive (known as distinctive character).

The new Common Practice states that a change in colour does not alter distinctive character, as long as:

  • The word/figurative elements coincide and are the main distinctive elements;
  • The contrast of shades is respected;
  • Colour or combinations of colours does not have distinctive character in itself;
  • Colour is not one of the main contributors to the overall distinctiveness of the mark.

This is likely to make it much harder for proprietors to enforce or maintain a registration in black and white if they use their mark solely in colour, as colour will usually have distinctive character in itself, and can often contribute to a mark’s overall distinctiveness.

IMPLEMENTATION

The changes in practice have been implemented by most trade mark offices across the European Union, with the exception of the Swedish, Danish, Italian, French and Finnish trade mark offices. However, they have approached the changes in different ways.

OHIM implemented the change in practice on 2 June 2014, and will now apply the new interpretation of the scope of protection of black and white marks to all trade mark applications and proceedings (such as oppositions) filed after 2 June 2014, and to all trade mark applications and proceedings pending on 2 June 2014.

The changes were implemented by the UK Intellectual Property Office on 15 July 2014. Unlike at OHIM, the new interpretation of the scope of protection black and white marks will only be applied to trade mark applications and proceedings filed after the changes were implemented.

COMMENT

It should be noted that this is simply a statement of practice by the relevant trade mark offices, and not a change in the law. However, it does seem to be consistent with some more recent decisions from the higher courts in the European Community.