Trade mark owners it seems will no longer be able to rely on black & white trade mark registrations to protect their use of the same trade mark in other colours. Earlier this month, the European Trade Mark and Design Network (largely made up of OHIM (the Community Trade Mark Office) and national member state offices) issued a communication on this topic.
The common practice ("CP") seeks convergence on, and will have consequences for, priority, relative grounds and genuine use. It does not affect the assessment of similarities between colours, use for the purpose of acquired distinctiveness, colour marks per se or infringement issues. It also does not require that the trade mark register be changed for already accepted priorities.
Under the new CP, a black & white ("B&W") trade mark will only be considered identical to the same mark in colour where the differences in colour are so insignificant that they will only be noticed by a reasonably observant consumer on a side by side examination of the marks. Note that the CP sets out that a B&W trade mark should only be considered identical to the same mark in greyscale following the same test.
Priority can be claimed during the six months following the first filing of the trade mark application in certain other countries. The first filing and the priority application must have triple identity, i.e. the same mark, the same applicant and at least one good/service in common.
Under the CP, a trade mark registered in B&W is not considered identical to the same mark in colour. Only if the differences in colour are so insignificant that they go unnoticed to the average consumer will the marks be considered identical. In practical terms for example, if the mark first filed claims B&W and the priority application is filed in colour, the marks will not be identical.
Relative Grounds for Refusal
Opposition is a procedure that takes place when a third party, on the basis of earlier rights in an earlier trade mark, requests that a trade mark application is rejected. Similarly, a third party can file an application for invalidity of a registered trade mark. The grounds on which an opposition and an application for invalidity may be based are called “relative grounds for refusal”. These relative grounds set out that a trade mark will not be registered, or if registered is liable to be declared invalid, if, amongst other things, it is identical with an earlier mark.
The difference between a B&W and colour version of the same mark will normally be noticed by the average consumer. The CP means that only where the differences between the marks are so insignificant that it may go unnoticed by the average consumer will they be considered “identical”.
A trade mark must be put to "genuine use" within a prescribed period of time or be vulnerable to cancellation. According to the CP, use of a mark in a form different from the one registered, i.e. a change in colour, still constitutes use of the trade mark so long as the change in colour does not alter the distinctive character of the trade mark. This is true where:
- the words or figurative elements continue to be the same and are the main distinctive elements;
- the contrast of shades is respected;
- colour is not the ‘distinctive character’ of the trademark in itself; and
- the overall distinctiveness of the mark is not derived mainly from the colour.
As the new CP means that trade marks registered in B&W are no longer automatically considered to cover all colours, owners of trade marks registered in B&W considering using or using colour versions of their marks would be wise to consider filing registration applications in those colours. In addition, new applicants will now have to consider the cost of registration of their marks in multiple colours as against the risk to their brand.
It should be noted that the CP is a statement of practice by OHIM and the national offices and, ultimately, it will be a matter for the Courts to assess these issues. The CP will be implemented by OHIM on 2 June 2014 and the Irish Patents Office on 16 July 2014.
For more information, please contact your usual Intellectual Property contact.
The content of this article is provided for information purposes only and does not constitute legal or other advice.