Trademark owners who registered their trademarks in black and white on the understanding that this would protect all colour versions of the mark should assess their trademark portfolios in light of recent changes to European trademark practice.
In April 2014, OHIM, the trademarks and designs registry for the European Union, published a Common Communication1 which announced significant changes to the European Common Practice on black and white and/or greyscale trademarks as compared to those filed in colour (the Common Practice). OHIM and 22 national trademark offices of the European Union signed up for the changes. In some countries, including the United Kingdom, the Common Practice introduces changes which signify a substantial departure from established legal principles and practice to the detriment of trademark owners.
The Common Practice affects every black and white and/or greyscale trademark registered or applied for as a Community trademark or as European national mark in any of the 22 national offices that have implemented the Common Practice. Failure to take into consideration these changes could lead to the rejection of priority claims in relation to marks filed in colour claiming priority to black and white applications and could render existing marks invalid or subject to revocation on the basis of a lack of genuine use.
What is new?
Under the Common Practice on the treatment of black and white and greyscale trademarks:
- trademarks filed in black and white and greyscale are considered identical to a colour version of the same trademark only if the colour difference is insignificant; and
- use of a colour version of a trademark will only support statutory use of a trademark filed in black and white or greyscale if the colour does not alter the distinctive character of the mark.
The Common Practice affects the following three areas of trademarks practice.
1. Claiming Priority
For the purpose of assessing priority, a trademark filed in black and white from which priority is claimed is not identical to the same mark filed in colour unless the differences in colour are so insignificant that they would go unnoticed by the average consumer. An insignificant difference is one which a reasonably observant consumer would not notice unless examining the marks side-by-side.2
Effectively, this means that the right to claim priority to an earlier application under the Paris Convention is lost if the priority application is in black and white while the later application is in colour.
The Common Practice does not address the position where the application from which priority is claimed is in colour and the later application is in black and white. This remains subject, therefore, to local practice.
This is not a significant departure from OHIM’s previous practice which held that trademark applications filed in colour could not claim priority from an earlier black and white filing even if the black and white filing was deemed to be protected for use in any colour combination in another jurisdiction. For European IP offices that previously followed a ‘black and white covers all approach’, however, the changes mean that fewer priority claims are likely to be accepted.
2. Relative Grounds
Under Article 4(1)(b) of the Trade Marks Directive,3 upon opposition by the proprietor of an earlier trademark, the trademark applied for must not be registered if, because of its identity with, or similarity to, an earlier trademark and the identity or similarity of the goods or services covered by the trademarks, there exists a likelihood of confusion.
According to the Common Practice, when assessing the similarity or identity of marks for this purpose, an earlier black and white mark and a colour version of the same sign will be considered identical only where the differences in the colours are negligible and hardly noticeable by an average consumer. The test is whether the differences between the colours or in the contrast of shades are so insignificant that they would only be noticed by a reasonably observant consumer on a side-by-side examination of the marks.
Accordingly, in an opposition against a trademark application filed in colour, where the earlier mark relied on in the opposition is filed in black and white, the earlier mark will not be considered identical to the colour version.
Before the change, some trademark offices followed a ‘black and white protects all colours’ approach, which meant that black and white and colour versions of the same mark were regarded as identical. In opposition proceedings, provided that the goods and services covered by the earlier mark and the application were also identical, the application would be refused without the need for the owner of the earlier mark to show there was a likelihood of confusion between the marks.4 The new practice of treating the marks as similar as opposed to identical makes it more difficult to succeed in opposition proceedings against a colour variation because the owner of earlier trademark needs to show that the marks are confusingly similar.
3. Genuine Use
In Europe, a trademark that has not been put to genuine use for more than five years in the country in which it is registered or, in the case of Community trademarks, in the Community, can be revoked unless there are proper reasons for non-use. Under Article 10(1)(a) of the Trade Marks Directive, the use of a trademark in a slightly different form to the registered form, can count as ‘genuine use’ of that trademark as long as the differences do not alter the distinctive character of the mark in the form in which it was registered.
As regards alterations in colour, the new Common Practice takes the approach that the main question is whether the use of the mark in colour alters the distinctive character of the registered black and white mark. According to the Common Practice a change only in colour does not alter the distinctive character of the trademark as long as:
- the main distinctive elements of the marks coincide;
- the contrast of shades is respected;
- colour does not have distinctive character in itself; and
- colour is not one of the contributors to the overall distinctiveness of the sign.
It follows, therefore, that the use in colour of a trademark registered in black and white may be insufficient to maintain the registration of the mark in the face of a challenge based on non-use to the validity of the registration.
What has not changed?
The Common Practice does not affect (i) the assessment of similarities between colours and whether a mark in black and white is ‘similar’ to the same mark in colour; (ii) acquired distinctiveness of a black and white mark as a result of the use made of a colour version of the mark; and (iii) colour marks per se.
Infringement issues are also outside the scope of the new policy. However, it is not clear how the practice relating to relative grounds can avoid impacting infringement issues. Referrals to the Court of Justice of the European Union on this issue are anticipated.
Implementation of the Common Practice.
The Common Practice was implemented by OHIM with effect from 2 June 2014. At the date of publication of this article, the Common Practice will have been implemented by all participating offices.5
Controversially, the Common Practice will be applied retrospectively by OHIM, Germany, the Benelux and certain other national trademark offices6 to all pending applications and proceedings. In all other offices, it will come into effect and apply to all applications and proceedings filed after the implementation date in that country.
Not all national European trademark offices are participating in or implementing the Common Practice: France, Finland and Italy are not participating and Denmark, Norway and Sweden opted out of implementation due to legal constraints that imply that black and white marks give protection for all colours or that they cannot be interpreted as simply consisting of the colours black and white.
The intention behind the Common Practice was to ensure consistency in the trademark practices of OHIM and national trademark offices and to simplify filing and examination procedures. This is part of OHIM’s wider ‘Convergence Programme’, which is aimed at harmonising the practices of the various IP offices within the EU. However, with several important European offices not participating or refusing to implement the changes, the programme has fallen short of achieving its goal of harmonising European trademark practice in this area.
The Common Practice has introduced some highly significant changes to the practice of European national trademark offices. The practical and legal effect of these changes in many trademark offices is to narrow the scope of protection previously provided by black and white marks. The changes, therefore, have the potential to affect trademark owners adversely while changes to the rules concerning use of colour versions of black and white trademarks could result in trademark owners losing protection for registered trademarks.
Trademark owners should review their existing European trademark portfolios, particularly portfolios consisting heavily of figurative device or logo marks, in order to determine whether they need to apply for protection in colour for those marks currently registered in black and white. Applying for protection in colour is particularly recommended where marks registered in black and white are used in colour and colour is a strong part of the trademark owner’s brand image.
New trademark applications in the EU should be filed in the same colours as the trademark is used or intended to be used. Potential applicants will, therefore, need to give thought beforehand to how their marks will be used in the future in order to guarantee the best protection.
Trademark owners or new applicants in the middle of, or about to enter into, trademark opposition proceedings or revocation proceedings should think about whether the Common Practice affects (or has changed) the subject matter of the proceedings.