An initiative designed to promote consistent practices between the European Union (EU) national trade mark offices and the Office for Harmonisation for the Internal Market (OHIM) has issued a common communication on the scope of protection of trade marks registered in black and white.
The European Trade Mark and Design Network document comes into effect on 15 July 2014 (and OHIM has already implemented the changes). Some offices (including the UKIPO) currently take the position that a trade mark registered in black and white automatically covers all colour variations. It is noteworthy that whilst 22 offices are making the changes to their practice, some have declined to make the change and others simply cannot because this would be contrary to provisions in their trade mark laws.
These changes will have consequences for use, oppositions and priority claims. Perhaps the most important issue however is the issue of relative grounds of refusal of trade mark applications, which usually goes hand in hand with the grounds of infringement (see below). The Common Practice states:
“An earlier trade mark in black and white is not identical to the same mark in colour unless the differences in colour are insignificant”
“An earlier trade mark in greyscale is not identical to the same mark in colour, or in black and white, unless the differences in the colours or in the contrast of shades are insignificant.“
Trade marks that are not considered identical due to the above change are likely still to be considered similar (in most cases) and the outcome might well not be any different than if two trade marks were considered to be identical under the current practice. The new practice does not say that a black and white version of a trade mark cannot be used to successfully oppose a colour variant and the fact remains that it can. It could be however that this change of interpretation is just enough of a difference for the outcome to be different.
Brand owners may therefore face an obstacle that previously they would not have. In some offices, including the Benelux office, German office and OHIM, the practice is to be applied on the implementation date retrospectively to all pending applications and proceedings. Therefore, circumstances could well change during the course of opposition proceedings, for example. For other offices, including the UKIPO, the changes will only apply to new applications and proceedings filed after the date of implementation.
Brand owners are advised that a number of colour variations of important trade marks are in some cases likely to provide a greater level of protection than a black and white only version of the same trade mark. Concerned brand owners would be advised to contact their usual IP advisor to discuss their specific circumstances, in order to determine whether new trade mark filings are justified and recommended. For example, if the colours of a trade mark are considered to be particularly distinctive and important, new applications might be recommended. There is now greater scope for the addition of colour to a trade mark to be deemed to alter the distinctive character of a mark where, for example, that trade mark comprises solely geometric shapes that are otherwise fairly non-distinctive.
Ultimately, the courts will decide on issues arising from the practice changes. It is arguable that the change to the comparison of trade mark practice is inconsistent with the decision of the Court of Justice of the European Union (CJ) in Specsavers v Asda. In this case, the trade mark owner’s use of the trade mark in a particular colour or combination of colours was considered relevant when assessing infringement of a trade mark registered in black and white. The CJ is almost certain to be called upon at some point to test the change in practice and its interpretation, as it was in the infamous IP Translator case, which caused a great deal of confusion regarding class headings and specifications of trade marks. Certainly this appears to be a question of law, even though the changes have been conveyed as a change in practice. Implementing this practice change, seemingly without any consultation on the point, is only likely to cause yet more confusion. The legal and commercial implications are still (excuse the pun) a ‘grey area’ and anything but black and white.