On 15 April 2014, the European Trade Mark and Design Network published a Common Communication on the Common Practice of the Scope of Protection of Black and White ("B&W") Marks (the "Communication"). Four months on, we look at how the Communication is affecting brand-owners. The Communication was prompted by the inconsistent degrees of protection being afforded to B&W trade marks by national EU trade mark offices. Whilst some offices (such as the UK IPO) have traditionally extended protection of a mark registered in B&W to cover all colour combinations, others have taken a more literal approach meaning that trade marks which are filed in B&W are only protected as such.
The Communication aims to harmonise these divergent approaches, by setting out a number of principles:
- Identity - The Communication considers the meaning of "identity". It states that a B&W mark will not be deemed identical to a coloured version of the same mark, unless the differences between the two are "so insignificant that they may go unnoticed by an average consumer". The Communication defines an "insignificant difference" as one which "a reasonably observant consumer will perceive only upon side by side examination of the marks". The Communication contains a number of examples of differences between pairs of marks which would, and would not, fulfil this test.
- Priority - The "identity" rules are developed further in the context of priority claims. The Communication provides that "a trade mark registered in B&W is not considered identical to the same sign in colour as regards priority claims. However, if the differences in colour are so insignificant that they may go unnoticed by the average consumer, the signs will be considered identical".
- Use - The Trade Marks Directive (2008/95/EC) provides that use of a trade mark includes "use of the trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered". The Communication explores what this means in the context of alterations in colour (i.e. use of a B&W mark in colour and vice versa). It states that a change in colour does not alter the distinctive characteristics of the trade mark so long as:
- The word/figurative elements coincide and are the main distinctive elements;
- The contrast of shades is respected;
- The colour or combination of colours does not have distinctive character in itself; and
- Colour is not one of the main contributors to the overall distinctiveness of the mark.
Despite its good intentions, the Communication is likely to leave brand-owners more in the grey than ever. We have therefore considered some of the most common questions:
- Will registrants now struggle to stop infringers?
The Communication does not mean that a B&W version of a trade mark can never be used to successfully challenge a later colour variant. However, since identity will now be an almost impossible threshold to achieve, it will likely be necessary to rely on similarity of marks, which involves the added hurdle of proving a likelihood of confusion.
- Are current B&W filings vulnerable to non-use challenges?
The new Communication has increased the risk that B&W marks that have been on the register for five years or more may be vulnerable to cancellation based on non-use.
For clients with existing B&W registrations which are only used in colour, it would be prudent to re-file those applications in colour if colour is arguably a distinctive element of the mark.
- Should new filings now be made in both B&W and colour?
Brand-owners should think carefully how they intend to use their mark in the future. Where colour is an important element of a brand, it is likely to be worth filing in colour so as to be in the safest position from a use perspective. However, there is still a case for B&W filings as well, since they will enable the registrant to bring an action against colour variants (albeit on the basis of similar marks and likelihood of confusion). An assessment will have to be made on a case by case basis, taking into account budget constraints and the importance of the mark to the business.
As yet there is no evidence from the registries to suggest any shift in the pattern of the way companies file their marks. However, this may change over the coming months.
- When does the Communication take effect?
The Communication applies to 22 trade mark offices (Italy, France and Finland did not participate in the communication and Sweden, Denmark and Norway opted out of implementation due to legal constraints). Implementation dates ranged from 15 March to 16 July 2014; the UK was one of the last to implement the changes, on 15 July. Controversially, some offices (including OHIM) will not only apply the Communication to all applications filed after the local implementation date, but also to applications and proceedings which were pending on that date.
- Legal challenges to the communication
The feeling across the trade mark world (particularly in jurisdictions where B&W marks were previously afforded wide protection) is that the Communication is flawed. In particular, it seems inconsistent with the recent CJEU ruling in Specsavers v Asda, where the CJEU found that where a CTM is not registered in B&W, but the registrant has used it extensively in a particular colour with the result that it has become associated with that colour, such use is relevant to the assessment of likelihood of confusion.
Consequently, the likelihood of a referral of a case based on the matter to the CJEU in the future is high. It may even become the subject of judicial review. Whatever happens, it looks set to be a colourful ride.