By David Rose KWM SJ Berwin’s Intellectual Property Group
In January this year, we reported on OHIM’s announcement of a new common practice for trademarks registered in black and white. OHIM and the participating national offices have now issued a Common Communication, together with details of the implementation process.
Under the new Common Practice, a black & white (or greyscale) mark will only be considered identical to a sign in colour where the differences between the signs are so insignificant that they will go unnoticed by the average consumer. An insignificant difference will be one that a reasonably observant consumer will perceive only upon a side by side examination of the marks.
This change of practice will have consequences for, use, oppositions and priority claims each of which we consider below. The practice does not affect infringement issues, use of black and white marks in colour for the purposes of acquired distinctiveness, the assessment of similarities between colours, and colour marks per se.
It should also be noted that this is simply a statement of practice by OHIM and the national offices and, ultimately, it will be a matter for the Courts to assess these issues (as proved to be the case in relation to class headings in the IP Translator case). Indeed, it is questionable whether this new Common Practice is consistent with the CJEU’s decision in Specsavers v Asda (discussed in our July 2013 IP Bulletin), where it said that, when assessing infringement of a mark registered in black and white, it was relevant to that assessment if the trade mark owner had used the mark in a particular colour or combination of colours.
Under EU law, use of a trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered will be sufficient to maintain a trade mark. Under the new Common Practice, a change in colour will not be considered to alter the distinctive character of a trade mark registered in black and white provided:
• 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 mark
However, it seems clear that under the new Common Practice many black and white marks that have been registered for over five years could now be at greater risk of revocation because their use in colour may not be regarded as use of the mark.
When assessing the similarity of a black and white mark and a coloured version of the same sign, the test is whether the difference is insignificant (i.e., the difference is one that a reasonably observant consumer would perceive only upon a side by side examination). For there to be a finding of identity, therefore, the difference in colour must be negligible and hardly noticeable by an average consumer. Of course, even if the signs are not identical, there may be a finding of similarity leading to a likelihood of confusion but the change in practice will result in a narrower scope of protection for black and white marks, at least before the participating trade mark registries.
For the purposes of priority claims, a trade mark registered in black and white will not be considered identical to the same mark in colour unless the difference in colour is insignificant.
The Common Communication sets out the implementation dates of the new practice at OHIM (2 June 2014) and the various participating national offices (e.g. 15 July 2014 for the UKIPO). Regrettably, there is some divergence between the various offices as to whether the new Common Practice applies to pending applications or only applications filed after the relevant implementation date, and also as to whether it applies to pending proceedings or only proceedings filed after the implementation date. For example, at OHIM, it will apply to pending applications and proceedings but, at the UKIPO, it will only apply to new applications and proceedings filed after the implementation date.
Sweden, Denmark and Norway have been constrained from participating in the new Common Practice because of their national laws. The Common Communication confirms that Italy, France and Finland have also decided not to implement the Common Practice.
What Steps Should Brand Owners Take Now?
The provisions relating to maintaining protection of marks registered in black and white are likely to be of most concern for brand owners. For new applications, brand owners should seriously considering applying to register marks in both black and white and in colour (even if previously they would have simply relied upon a black and white mark), particularly where colour is a distinctive element of the mark. Where brand owners have existing black and white registrations that are used in colour, it would be prudent to re-file those applications in colour if colour is arguably a distinctive element of the mark.
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