The UK Intellectual Property Office ("IPO") has issued guidance on the circumstances in which the use of a mark in colour will be taken into account in assessing the likelihood of confusion with an earlier registration for a black and white mark. OHIM has also announced upcoming changes in the treatment of colour marks, such that the use of a mark in colour will only constitute genuine use of a black and white registered mark if the colour does not alter the distinctive character of the mark. With regard to priority claims and relative grounds for refusal, marks filed in black and white or greyscale will not be considered identical to the same mark in colour unless the differences in colour are insignificant.
- The new guidance from OHIM and the IPO represents a significant change in the treatment of colour marks by trade mark registries.
- In light of these changes, brand owners should review their portfolios of marks especially if logos or device marks are a key part of their brand equity.
- Brand owners seeking to register marks where they intend colour to be a key distinctive feature, should consider registering these marks in colour as well as black and white. This will help to ensure that the distinctive character of the colour is taken into account in any potential cancellation or opposition proceedings, without the need for further evidence.
- Brand owners with marks in black and white only should consider filing new colour marks if colour is or has become an important brand element.
Tribunal Practice Notice (1/2014)
The IPO has issued Tribunal Practice Note ("TPN") 1/2014 in response to the judgment of the Court of Justice of the European Union ("CJEU") in Specsavers International Healthcare Limited and Ors v Asda Stores Limited (Case C-252/12).
In the Specsavers case, the CJEU held that where a trade mark is registered in black and white but used extensively in a particular colour or combination of colours, such that it has become associated in the mind of a significant portion of the public with that colour or combination of colours, the colour or colours which a third party uses in order to represent a sign alleged to infringe that trade mark are relevant in the global assessment of the likelihood of confusion or unfair advantage under Article 9(1)(b) and (c) of EC Regulation No 207/2009. Therefore, the fact that Asda had used its Asda logo mark in the colour green was relevant when assessing the likelihood of confusion with Specsavers' earlier registered black and white trade mark because Specsavers had extensively used its marks in green.
The TPN explains that the above finding in the Specsavers case may be applicable, by analogy, to opposition and cancellation proceedings before the IPO under s.5(2) and s.5(3) of the Trade Marks Act 1994. In such proceedings, the IPO is required to consider the likelihood of confusion "in all the circumstance in which the mark applied for might be used if it were to be registered" (Case C-533/06 O2 Holdings v Hutchinson 3G UK at paragraph 66). Therefore, the UK IPO must consider how a later mark could potentially be used and not only how it is currently used.
In light of the above, the TPN makes the following three conclusions:
- Where colour is established to form part of the distinctive character of an earlier mark (even if only registered in black and white), the potential or actual use of a later mark in the same colour will be considered to be a relevant factor in terms of assessing the likelihood of confusion and whether unfair advantage has been taken of the earlier mark.
- Due to the IPO's specific duty to consider all normal and fair future potential uses of a later mark, evidence of the existing use of the later mark in a different colour to the colour in which the earlier mark has been registered, or used, is not a relevant factor when assessing the likelihood of confusion.
- Where an earlier mark has been registered in black and white but either:
- it has not been used; or
- it has been used in colour(s), but the extent and consistency of such use is not such that the colour(s) formed part of the distinctive character of the earlier mark)
colour will not be taken into account. Only the mark as registered in black and white will be considered.
OHIM Common Communication on the Common Practice of the Scope of the Protection of Black and White Marks
On 15 April 2014, OHIM issued a Common Communication on the Common Practice of the Scope of the Protection of Black and White Marks ("Common Practice") to harmonise the different approaches of national offices to the scope of protection given to marks registered in black and white. The Swedish, Danish and Norwegian national offices have opted out of the Common Practice due to legal constraints and Italy, Finland and France did not participate. The Common Practice must take effect by 15 July 2014 (in the 22 national offices who have signed up) with OHIM implementing from 2 June 2014. Controversially, OHIM (and some national offices) will apply the Common Practice to any pending applications or proceedings so the new rules are not just for applications filed after the implementation date.
The Common Practice deals with three key areas: (i) priority claims; (ii) relative grounds for refusal; and (iii) determining whether use of a mark in colour constitutes genuine use of a black and white registered mark.
Priority claims and relative grounds for refusal
Prior to the Common Practice, some national offices applied the "black and white covers all" approach, whereby marks registered in black and white provided protection for all colours, whereas others applied the "what you see is what you get" approach, whereby marks filed in black and white are only protected as such.
The new guidance harmonises the approach in stating that an earlier mark filed in black and white or greyscale is NOT identical to the same mark in colour unless the differences in colour are insignificant. "Insignificant differences" are those that a reasonably observant consumer will only perceive upon a side by side examination of the marks.
Genuine use of a CTM for an uninterrupted period of five years is required in order to prevent revocation of the mark. Prior to the Common Practice, use of a colour version of a mark registered in black and white constituted genuine use of the mark.
The Common Practice states that a colour version of a mark registered in black and white or greyscale will constitute genuine use only if the distinctive character of the mark is not altered. A change in colour does not alter the distinctive character of the mark if the following criteria are met:
- the word/figurative elements are the main distinctive elements;
- the colour does not possess distinctive character in itself;
- the colour is not a main contributor to the overall distinctiveness of the mark; and
- the contrast of shades is respected.
As a result of this guidance, colour versions of marks registered in black and white may not be deemed to be genuine uses of such marks, putting the marks at risk of being revoked.