OHIM - proposed common practice on scope of
protection given to black and white trademarks
As part of its Convergence Programme, the OHIM Administrative Board
recently endorsed a proposed new common practice on the scope of
protection given to black and white (or greyscale) marks. According to the
proposed common practice, registrations for such marks would no longer
automatically cover all colours. This represents a significant departure from
the widely accepted "black and white covers all" approach (which is in fact a
legal requirement in a number of European jurisdictions) and may make it
more difficult for brand owners to rely on black and white registrations to
protect their use of the same mark in other colours. It is not currently clear
whether or not the common practice, if adopted, would have retrospective
The current version of the proposed common practice deals with three issues
relating to the scope of protection conferred by black and white marks, namely
priority claims, identity of marks, and genuine use.
A trade mark registered in black and white or greyscale will only be
considered identical to the same mark in colour where the differences
"are so insignificant that they may go unnoticed by an average
consumer". The common practice states that this will be an
exceptional situation, as the average consumer will normally notice
the differences between black and white / greyscale marks, and their
Again, there is an exception covering express national laws: if a
national IP office is bound by law to allow black and white marks to
cover all colours, all colour variations of that mark can be considered
identical provided the contrast in shades is respected.
Under the new common practice, a change in colour alone does not
alter the distinctive character of a black and white / greyscale mark for
the purposes of assessing use, provided that:
The word/figurative elements coincide and are the main
The contrast of shades is respected;
The colour or combination of colours does not have distinctive
character in itself; and
Colour is not one of the main contributors to the overall
distinctiveness of the sign.
Trade mark owners with a black and white registration should
therefore have protection in respect of colour versions of the same
mark, to the extent that the mark is not distinctive by virtue of the
Brand owners may take some comfort from under the proposals, as the fact
that signs are not identical is without prejudice to a possible similarity between
the signs which could lead to a likelihood of confusion between them.
Nevertheless, the proposals, if adopted, would considerably narrow the scope
of protection available to brand holders with black and white / greyscale
registrations, and seem inconsistent with the recent CJEU ruling in
Specsavers v Asda, in which the CJEU found that where a CTM is not
registered in colour, but the proprietor has used it extensively in a particular
colour with the result that it has become associated with that colour, the colour
in which a third party uses its alleging infringing sign is relevant in the global
assessment of the likelihood of confusion or unfair advantage. Similarly, the
fact that the third party is itself associated with the colour in which it uses its
sign is also a relevant factor in the assessment of confusion or unfair
User associations, including MARQUES, have raised concerns that the
common practice would not reflect the current "black and white covers all"
approach which is enshrined in law in some European jurisdictions (such as
Denmark, Sweden, Italy and Norway) and followed by national IP offices in
many others. Despite criticism of the proposals, the new common practice in
its current form has been approved by OHIM's Administrative Board and the
participating IP offices, and appears to be progressing towards the
implementation stage. It remains to be seen whether critics' comments will be
addressed and whether the common practice is ultimately implemented.
Our previous alert on Specsavers v Asda case can be seen here.
New OHIM common practice on class headings
OHIM has recently adopted a new common practice (set out in a Common
Communication on 20 November 2013) on the acceptability of the general
indications of the Nice class headings for the purposes of identifying the
goods or services for which trade mark protection is sought. The new
common practice provides important guidance to applicants as to the level of
clarity and precision with which they must identify the goods or services which
their trade mark will be applied to.
The new common practice represents the outcome of a Convergence
Programme project undertaken by OHIM in conjunction with national IP offices
of the EU, Norway and Switzerland. The project involved the review of 197
general indications of the Nice class headings; of these, 11 (either partly or
wholly) were found not to be sufficiently clear and precise. Details of the class
headings considered not to be sufficiently clear and precise are set out in the
Common Communication, available here.
The common practice has been effective at OHIM since 25 November 2013.
All national IP offices within the EU and in Norway are to implement the new
practice by 20 February 2014. The offices have agreed that the IP Translator
judgment should not have retrospective effect.
The introduction of this new common practice follows the CJEU's judgment in
the IP Translator case on the use of the Nice class headings in trade mark
applications. In IP Translator it was held that, although the Trade Marks
Directive does not preclude the use of the general indications of the class
headings to identify goods and services, the specification must be sufficiently
“clear and precise” to allow the competent authorities and economic operators
to determine the extent of the protection sought. See our August 2013 update
on the IP Translator ruling (available here) for more information.
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