The Office for Harmonization in the Internal Market ("OHIM") has published new guidance on trade marks that have been filed in greyscale or black and white. The new guidelines came into effect on 2 June 2014. As of this date, the guidelines broaden the scope of what will be considered "identity". The new guidelines will not affect established practice regarding proof of use and relative grounds but will have an impact on priority.
Priority: the previous position
Previously, where a trade mark application was filed in the UK, the applicant was entitled to backdate the filing date of the application in question by a maximum of 6 months provided certain criteria were met. These criteria include:
- an earlier application for an identical trade mark having been made for the same goods and services in a country which had ratified the Paris Convention; and
- the UK application having been made no later than 6 months from the date of the earlier application.
If the above criteria were met, the filing date for the UK application would be back dated to the date of the earlier application in respect of which priority was claimed.
Criterion (i) is affected by the regulations, specifically the requirement, under the old regime, for the marks in both the first and second applications to be identical. Previously, differences in colour were enough to render marks not identical even if the black and white mark was otherwise identical to the colour mark.
Priority: the revised position
From 2 June 2014, OHIM will now accept certain priority claims that it would have rejected in the past. Slight differences in colour between marks will now, in some circumstances, no longer render marks not identical. Following the publication of OHIM's guidance, the test for determining whether colour marks are identical to black and white or greyscale marks is "if the differences in colour or in the greyscale are so insignificant that they could go unnoticed by the average consumer, the marks will be considered identical."
The new-look test for considering whether colour marks are identical to greyscale or black and white marks (and vice versa) has yet to be tried. It is therefore not clear how the significance of the differences between colour and greyscale or black and white marks would be assessed from the perspective of an average consumer to determine whether or not these differences would go unnoticed.
The general message from OHIM going forwards seems to be that the average consumer would usually notice the difference between an earlier black and white or greyscale mark and a colour version of the same sign, and consequently would not regard the marks as being identical. Commentary from OHIM also suggests that it will only be under exceptional circumstances that colour signs and their greyscale or black and white counterparts are regarded as identical. One example given by OHIM as to when marks will be regarded as "identical" is where a reasonably-observant consumer would only spot the difference between the two marks by examining them side by side. It is again unclear how OHIM would determine this and, as such, the ramifications of the guidance remain to be seen.