European trade mark practice given green light to clear grey area with spectral shift in how black and white trade marks are treated.

On 15 April 2014 the European Trade Mark and Design Network (an organisation focused on achieving common practice amongst European trade mark and design systems) published a communication on the ‘Common Practice of the Scope of Protection of Black and White Marks’.

This communication outlines changes to practice in the European Union with regard to the treatment of ‘black and white’ logo marks. This will affect trade mark rights for both standard national applications in European countries and for European Community trade marks.

The New Golden Rule

Previously in the European Union there was a division amongst jurisdictions. A number of members adopted the ‘black and white’ covers all approach. That is that the filing of an application in ‘black and white’ was deemed to provide protection for all colours (as is the case in Australia).

On the other hand, there was a group of members that adopted the ‘what you file for is what you get’ approach and this is now to be adopted as the standard throughout Europe.

The practical effect of this change is three-fold.

First, there will be some change in what constitutes a valid priority claim. This is because to claim priority it is necessary for the mark the subject of the European Application to be identical to the mark the subject of the priority claim. Thus, if your home (Australian) application is filed in ‘black and white’ (or grey scale) then your application in the European Union will also need to be filed in the same format and this is unlikely to provide you with protection for the colour version of your mark.

Secondly, tests on relative grounds (that is when marks are compared) will change. Under the new tests, it is possible that if you own a prior mark for a ‘black and white’ logo, it may not be considered sufficiently similar to a new colour application to act as a bar to registration.

Thirdly, and probably most importantly, there will be a shift in what is considered ‘genuine use’ of a registered trade mark.Previously use of a colour version of a trade mark was considered sufficient to support a ‘black and white’ or grey scale registration. However, this is unlikely to remain the case.

Showing True Colours

To illustrate the effect of these changes the European Trade Mark and Design Network provided the following example:

Click here to view image.

The marks in ‘Image 1’ have been deemed as having ‘insignificant differences’. Under these circumstances, it would be possible to file an application in the European Union for the trade mark on the right based on an application filed in Australia for the mark on the left. Similarly, use of the mark on the right would be considered sufficient to support a registration for the mark on the left (and vice-versa).

In contrast, the marks in ‘Image 2’ are considered to have ‘significant differences’. In this situation, it would not be possible to file an application for the mark on the right (the colour version) based on an Australian application for the mark on the left. More importantly, if you have only used your mark in a colour version, then this is unlikely to be considered sufficient to support an existing ‘black and white’ or grey scale registration.

Golden Opportunity

Trade mark owners should use this change as a good reason to review portfolios worldwide. In particular, owners of logo trade marks in the European Union need to ensure that they are using a version of their trade mark that will support ‘genuine use’ of the registered mark. This consideration now needs to include an assessment of how the trade mark is being used with respect to the colour v ‘black and white’ issue.

Similarly, trade mark owners looking to file new applications for logo marks in the European Union need to be alert as to whether the logo will be used in colour and/or ‘black and white’ to avoid potential ‘genuine use’ issues down the line.

Finally, trade mark owners who wish to file applications in the European Union claiming convention priority from an earlier Australian application, need to be mindful of these changes to ensure that the application filed in the European Union will provide appropriate protection.