OHIM has published a new common practice communication, aimed to harmonise the practice between the different approaches of national offices in the EU for the scope of protection given to trade marks registered in black and white or greyscale. Not all national offices, including Sweden, have signed up to the common practice. The UK-IPO and OHIM (together with a number of other national registries) have implemented changes.
Historically, where a mark was filed in black and white (or greyscale), many national offices treated the registered mark as covering all colour variations in otherwise identical marks. Accordingly, it was common practice to file for a trade mark in black and white (or grey scale), in order to obtain the broadest protection possible since it was accepted that a mark, registered in black and white, would provide protection for the identical mark in all colours. Thus brand owners enjoyed a very broad protection through one black and white mark and were able to validate that mark through one or more colour versions of it.
Under the new practice OHIM (and most other national registries) will no longer treat black and white marks as covering all (identical) colour versions.
New Common Practice
Only marks that feature insignificant differences in colour compared to the registered mark will be considered identical. Without doubt, most brand owners will be affected by the new practice since most trade marks are used in some colour form. The new practice will affect trade marks from their early days through to and beyond registration since it will affect priority claims, opposition proceedings and genuine use requirements. Further, OHIM is applying the new practice retrospectively to all pending applications and proceedings.
What is an Insignificant Difference?
Given the far-reaching consequences of the new common practice, OHIM has issued examples of insignificant and significant changes in colour to aid brand owners:
Insignificant Difference in Colour
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Significant Difference in Colour
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Impact on Trade Mark Practice
The new practice will have a major impact on the scope of protection of black & white marks in three key areas:
- Priority claims;
- Relative grounds for refusal; and
- Determining whether use only in colour of a mark registered only in black and white constitutes “genuine use” of the registered black and white mark.
(i) Priority Claims
Priority can only be claimed from identical marks. If the mark from which priority is claimed is in colour, the priority filing will also have to be in colour unless the absence of colour is insignificant. The same would also be true where priority is claimed from a mark filed in black and white. A difference in colour will be insignificant if a reasonably observant consumer would only notice the difference by examining the marks side by side (e.g. replacing black areas with a dark navy).
(ii) Relative Grounds for Refusal
The new common practice has the effect that a mark registered in black and white (or greyscale) will only be “identical” to the same mark in colour if the addition of colour has no significant impact on the mark. Thus the addition of colour must be insignificant such that the average consumer will only notice it on side by side examination between the black and white and colour marks.
The effect of common practice will inevitably have an effect on decisions in opposition proceedings, since black & white marks will provide less protection than previously. This is particularly so if colour may be considered as a distinctive element of the mark.
(iii) Genuine Use
Under European practice, a trade mark (including CTMs and national marks) becomes subject to use requirements 5 years after registration. If a mark is not put to “genuine use”, it can be revoked on the basis of non-use by third parties.
The new common practice establishes that the use in colour of a mark registered in black and white (or greyscale) will constitute genuine use of that mark only if the colour does not alter the “distinctive character” of the mark. OHIM has given the following guidelines on what would be considered the “distinctive character” of a mark in terms of the new common practice:
- The word / figurative elements are the same and are the main distinctive elements
- The contrast of shades is respected
- The colour or combination of colours does not have distinctive character in itself
- Colour is not one of the main contributors to the overall distinctiveness of the sign
There is a risk – albeit one which should be manageable by adherence to the criteria above – that the use of colour versions of marks only registered in black and white may not be deemed to be genuine uses of those marks, thus putting them at risk of revocation. For example, a mark that is registered in black and white but which is used only in colour (which is likely a rare occurrence) may become vulnerable to revocation since the trade mark owner would not be able to evidence genuine use of the mark which is the subject of the trade mark registration.
Brand owners are advised to audit their existing trade mark portfolios and consider re-filing, where appropriate, colour marks of their most important trade marks, such as house marks. This advice is particularly relevant for portfolios where the mark(s) are either older than 5 years (and therefore subject to proof of use requirements) or are coming up to 5 years.
Where a brand owner is considering the filing of a new trade mark application, we recommend particular consideration be given to the proposed use of the mark. Depending on the business concerned, it may be worth filing not only the main colour version of the mark but also a black and white or greyscale version, to cover some (if not all) iterations of the mark in a wide range of colours that the owner may wish to make use of in the future.
A Final Word
OHIM states that the new practice does not affect infringement cases. However, it remains to be seen whether the courts will take a different approach to OHIM or the national registries. We consider it unlikely that the courts deviate much, if at all from the practice followed by the national registries and OHIM.
Below is a flowchart to help you to gauge whether the changes might have lessened the protection enjoyed by your current marks.
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