New official guidelines raise serious concerns over the registration of colour trade marks in black and white
When registering a colour trade mark within the European Union, the received wisdom has been to register in black and white (or greyscale). The rationale for this approach is to avoid limiting the scope of coverage to any particular colour or combination of colours. It is also intended to allow the trade mark owner to use the mark in any colour(s) without fear of the registration becoming vulnerable to non-use attack. However, new official guidelines raise concerns that this approach could now carry serious risks.
The new guidelines stem from an EU-wide convergence programme and a resulting publication of a ‘Common Practice of the Scope of Protection of Black and White Marks’. This Common Practice has been adopted by the European Community Trade Mark Office (‘OHIM’), and is also being adopted by the national trade mark offices of most EU member states (including the UK IPO).
The Common Practice addresses three very specific issues:
1. Use of a colour mark registered in black and white
Established practice is that use of a colour version of a mark registered in black and white (or greyscale) is generally sufficient for defending the registration from non-use attack, or for proving use of a registration when invoked in opposition to a third-party application. This practice is derived from harmonised EU-wide laws, in which use of a mark, as registered, is expressly deemed to include use in a form differing in elements which do not alter the distinctive character of the mark in the registered form.
The Common Practice reflects these existing statutory provisions, making it clear that where a mark is registered in black and white (or greyscale), use in colour still constitutes use of the mark as registered. However, it also adds some significant new provisos:
- the word/figurative elements must coincide and must be the main distinctive elements;
- the contrast of shades must be respected;
- the colour or combination of colours must not possess distinctive character in itself and;
- colour must not be one of the main contributors to the overall distinctivenessof the mark.
It is arguable these provisos do not really depart from established practice and are simply intended to provide greater clarity and greater uniformity between different trade mark offices. After all, where a mark is registered in black and white (or greyscale), with no claim to any particular colour, it is hard to conceive a situation where the word/figurative elements of would not be considered the main distinctive elements of the mark as registered.
The problem is the subjective, and somewhat vague, nature of the provisos. This creates additional uncertainty for trade mark owners and their attorneys, as well as additional scope for argument in inter partes disputes. It also risks encouraging trade mark examiners to take an overly cautious or formulaic approach.
Take provisos (c) and (d), for example. It is arguable that use of colour in any mark has the potential to contribute significantly to the overall distinctiveness of the mark as used, particularly if the public has been ‘educated’ to expect a given mark to be used in a particular colour (or combination of colours). This could be of particular concern where the overall distinctiveness of the mark as registered (in black and white) is relatively weak.
Proviso (b) also requires a highly subjective assessment regarding ‘contrasts of shades’. To illustrate this, the Common Practice states that marks 1 and 2 below would be deemed ‘identical’, even though there is clearly some difference in the ‘contrast of shades’. By comparison, the more contrasted shading in mark 3 is apparently enough to render it significantly and perceptibly different.
Click here to view the image.
But what exactly is meant by ‘contrast of shades’, how much variation in shading is acceptable, and how is this to be measured, particularly given that one’s perception of shading differences may be greatly affected by differences in, say, colour, brightness, size, context and so on? Clearly, just stating that “the contrast of shades must be respected” does not provide a straightforward, objective test for trade mark examiners to follow.
2. Assessing ‘identity’ of marks
Under the new Common Practice, a trade mark registered (or applied for) in black and white (or greyscale) shall not be deemed identical to the same mark applied for subsequently in colour, unless the colour difference is so insignificant that a reasonably observant consumer would perceive it only upon side-by-side comparison of the marks.
For example, marks 1 and 2 below would be deemed ‘identical’ to each other even though one is in black and white whilst the other is in dark blue and white.By comparison, mark 3 would not be deemed identical to marks 1 and 2, as the colour difference is much more obvious.
Click here to view the image.
Well established case law already makes it clear that two marks are only to be deemed identical if one reproduces the other without any modification or addition, or where, viewed as a whole, the former contains differences so insignificant that they may go unnoticed by a “reasonably well informed and reasonably observant and circumspect” consumer who rarely has the chance to make a direct comparison between marks and “must place his trust in the imperfect picture of them that he has kept in his mind”.
As such, this part of the Common Practice is probably the least controversial in that it simply reflects and reinforces the established approach to assessing ‘identity’ of marks.
3. Priority claims
The Common Practice stipulates that when an application claims priority from an earlier application in another Convention country, the marks covered by the respective applications “need to be the same in the strictest possible meaning, and the examiner will object if there is any difference in the appearance of the marks. Therefore, […], a trade mark registered in black and white is not considered identical to the same sign in colour as regards priority claims.”
However, the Common Practice also adds that “if the differences in colour [between the respective marks] are so insignificant that they may go unnoticed by the average consumer, the signs will be considered identical.” Again, an insignificant difference between two marks is defined as “a difference that a reasonably observant consumer will perceive only upon side by side examination of the marks”.
The rationale given for this part of the Common Practice is that colour printers and copiers are now widely available and used. This means it is no longer the norm for priority documents to be issued and submitted in black and white, such that the difference between marks filed in colour and marks filed in black and white has acquired more relevance. Accordingly, it appears that the Common Practice simply seeks to provide more up-to-date guidance to examiners on this issue.
Nevertheless, by stipulating that ‘insignificant’ colour differences should not result in objections to a priority claim, the Common Practice does arguably broaden the scope of what is to be considered identical. This could conceivably lead to the acceptance of priority claims that would not previously have been accepted due to differences in colour between the marks. Whether this actually happens in practice remains to be seen.
Black and white, or a recipe for confusion?
In principle, the Common Practice is not intended to alter established trade mark office practice, but to reflect and clarify existing statutory provisions and case law, and to ensure more uniformity amongst the many trade mark offices of the EU.
That said, there are potentially serious ambiguities in some aspects of the Common Practice, which means that interpreting them is far from ‘black and white’.
The Common Practice will undoubtedly create greater uncertainty as to whether use of certain marks in colour is use of those marks as registered in black and white (or greyscale). It also risks encouraging trade mark offices to adopt an overly rigid, simplistic and artificial style of examination; one which is far removed from the way in which the average consumer naturally perceives marks in the real world. And then there is the possibility of it broadening the scope of what is to considered ‘identical’ in the context of priority claims.
For trade mark owners and their attorneys, day-to-day best practice is probably unlikely to change significantly as a result of the Common Practice. However, there will now be new and interesting grounds for debate in ex parte and inter partes proceedings, and trade mark attorneys will be closely monitoring how certain aspects of the Common Practice are interpreted by examiners in different countries.
The adoption of this Common Practice both underlines and increases the importance of taking care when applying to register marks used in colour, as well as the value of regular portfolio reviews to ensure that marks are safely and sufficiently protected.
The fact remains that the safest way to avoid problems proving use of a registered mark is to register it in the exact form in which it is to be used, and to re-register it as and when the used form changes. However, this is clearly not always practical, which means that for most trade mark owners, registering their marks without colour will generally still be the most attractive and sensible option. It should also be possible, in most cases, to minimise concerns over the new ‘contrast of shades’ guidelines by simply registering marks in greyscale, as opposed to pure black and white.