OHIM has updated its Examination Guidelines following the European Trade Mark and Design Network's common communication on the scope of protection of trade marks registered in black and white and/or greyscale. The common communication provided guidance on whether the same mark in colour is to be considered identical with regard to priority claims, relative grounds for refusal and proof of use.
The following sections of OHIM's Examination Guidelines have been updated to incorporate the agreed common practice:
Priority Claims - OHIM Guidelines for Examination- Part B, Examination, Section 2 Examination of formalities:
OHIM now considers that a mark in colour and the same mark in greyscale/black and white will be considered "identical" as long as the difference between the two marks is "insignificant".
What this means in practice: A trade mark owner applying for a colour CTM cannot claim priority from a black and white mark unless it can show that the addition of colour is an "insignificant" change that would go unnoticed by average consumers. OHIM have helpfully provided a number of examples of acceptable and unacceptable priority claims in the updated guidelines.
Relative Grounds - OHIM Guidelines for Examination- Part C, Opposition, Section 2 Identity and likelihood of confusion, Chapter 3 Comparison of Signs :
Similarly, the difference between a prior mark in black and white and the same mark in colour must be so insignificant it could go unnoticed by the average consumer. OHIM's guidelines state "it is only under exceptional circumstances that the signs will be considered identical" in this regard.
What this means in practice: Rather than showing the marks to be identical, trade mark owners will have to prove that there is a likelihood of confusion between a prior mark in black and white and the same mark in colour.
Proof of use - OHIM Guidelines for Examination- Part C, Opposition, Section 6 Proof of use:
The amended guidelines clarify that a change in colour alone does not alter the distinctive character of the mark for the purpose of assessing use, provided that: (i) the word/figurative elements coincide and are the main distinctive elements; (ii) the contrast of shades is respected; (iii) the colour or combination of colours does not have distinctive character in itself; and (iv) colour is not one of the main contributors to the overall distinctiveness of the sign.
What this means in practice: This approach protects owners of black and white trade marks in respect of colour versions of the same mark to the extent that the mark is not distinctive by virtue of the colours used. Owners of black and white trade marks will have to show that use in colour does not alter the distinctive character of the mark, meaning that the layout of the device is identical and the colour is not a key distinctive element. They will also need to show that the colour contrasts or shading are substantially the same for both versions of the mark.
Position for trade mark owners in light of the implemented practice on black and white marks
Trade mark owners will need to consider the colours in which a mark is intended to be used as this will affect the assessment in opposition proceedings and whether a mark is vulnerable for non-use. As a result, trade mark owners will have to contemplate filing applications for both black and white and colour versions of the mark, particularly where colour is a key distinctive element.