The German Federal Court (BGH) recently issued a decision on the scope of protection of black and white trade mark registrations in infringement proceedings. While this case involves car parts, it is of broader significance dealing as it does with the issue of the scope of protection afforded to black and white trade mark registrations.
The court clarifies that it does not consider black and white registrations to be identical to marks using the same sign (device, logo or stylised word) but in colour. This is true as long as the applied colour is "not negligible".
The defendant manufactured the famous BMW emblem to be used as replacement part for BMW cars. BMW claimed trade mark infringement and sought information on distribution channels, damages and destruction of all products, but only relied on a black and white registration of its emblem.
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The German Federal Court held that the signs are not identical with respect to the German implementation of Art. 5(1)(a) of the Trade Mark Directive. The decision found that the infringing product deviates significantly in colour from the registered trade mark. When it comes to identity, subject matter of the protection is the registration only and not the specific use. That means the scope of protection of black and white registrations extends only to black and white uses in double identity cases, as long as the deviation in colour is not negligible.
To that end, the court referenced OHIM's Examination Guidelines. Just recently OHIM has implemented guidance relating to the scope of protection of black and white and greyscale marks in relation to trade mark registrations. These include examples of negligible and significant colour deviations.
The court instead relied on the likelihood of confusion test as set out in the German implementation of Art. 5(1)(b) of the Trade Mark Directive. It held that the goods were identical, trade mark distinctiveness was above average and the signs were highly similar. The blue fields and silver letters were not enough to change the assessment of high visual similarity. Additionally, the court stated that coloured representations of the same sign will regularly mean a likelihood of confusion.
With this decision, the German Federal Court effectively abandons the notion of "black and white covers all", which was the previous assumption in Germany. There has been a recent slow progression shift away from this assumption in light of the new OHIM practice guidelines.
It is, however, too early to draw definite conclusions from the judgement for two reasons. Firstly, whether a colour deviation is negligible or significant is still very much open to interpretation, even though the court references OHIM's Examination Guidelines. Secondly, there has not yet been any case law from the (Higher) Regional Courts. Especially with an area that is very much open to interpretation, it will be interesting to see how the Federal Court's judgement will be applied by the lower courts.
By referencing OHIM's Examination Guidelines, the court effectively applies the same guidelines for identity in infringement proceedings as the OHIM does for opposition/invalidity proceedings. The court doesnot, however, say whether it considers these guidelines to be binding but merely states that its assessment corresponds to that of the OHIM. Again, it will be interesting to see how the lower courts implement this statement in practice.
The judgement must be seen in light of the CJEU Specsavers decision. The CJEU held that if a trade mark is used in a specific colour it has not been registered for and is well-known or has an enhanced reputation for that colour, this can be incorporated in the likelihood of confusion test. This should make it easier at least for well-known marks or marks with an enhanced reputation in a particular colour(s) to rely on the likelihood of confusion test.
If this new case law catches on, it has the potential to make life a lot harder for rightsholders. Black and white trade mark registrations will enjoy less protection in infringement proceedings. Where identity was an easy case for rightsholders, the likelihood of confusion test now attributes the burden of producing evidence to them. Therefore, rightsholders should carefully consider how they want to use their sign and then obtain protection accordingly.