The Office for Harmonization in the Internal Market (OHIM) has recently implemented the European Trade Mark and Design Network’s common communication, issued in April of this year, on how the OHIM and EU IP offices should assess black and white trade marks as against colour versions of the same marks.
The communication is issued as part of a wider project to achieve harmonisation in the practices of EU IP offices and OHIM. Under the new practice, a black and white (or greyscale) trade mark will not be considered to be identical to a colour mark unless the differences in the colours or in the contrast of the shades are insignificant. An insignificant difference between two marks is a difference that a reasonably observant consumer will perceive only upon side by side examination of the marks.
The communication is relevant to three areas of trade mark practice:
- Genuine use
- Priority claims
- Relative grounds
Infringement issues are specifically excluded from scope and countries are free to assess infringement by reference to existing case law and, in particular, the recent CJEU Specsavers decision. Also out of scope is the issue of assessing identity when the earlier mark is in colour and the later mark is in black and white or greyscale.
Concern for brand owners
The new practice is concerning for brand owners, especially those that own black and white (or greyscale) marks and that have, to date, legitimately relied on the practice that a black and white mark provides protection for that mark in all colours. Now the protection offered by these marks could be significantly weaker. For example, whereas it was previously relatively straightforward to successfully oppose a colour version of a mark on the basis of an existing black and white mark, it will now be more difficult as it will be necessary to show that the colour version is confusingly similar.
Therefore, prospective brand-owners should consider registering marks only according to how the marks will be used, while it may also be prudent for existing brand-owners to consider re-registering their black and white marks to include colour versions of those marks.