The protection and enforceability of black and white trademarks in the European Union has been called into question. Trademark owners should review their portfolios to determine whether this change will affect their European trademarks.
The European Trade Mark and Design Network has published a new common practice communication which took effect in all participating EU countries and OHIM on various dates with the last on July 16, 2014. Sweden, Denmark and Norway have opted out of the Common Practice because of legal constraints and Italy, France and Finland did not participate. The Common Practice aims to harmonise the practice between the different approaches of national offices in the EU regarding the scope of protection given to trade marks registered in black and white or greyscale. The new practice applies retrospectively to pending applications and proceedings.
The former practice at OHIM and in many national offices was that if a mark was registered in black and white, the registration also protected colour variations of the mark.
Under the new practice, only trademarks that feature insignificant differences in colour compared to the registered mark will be considered identical. An insignificant difference is one that a reasonably observant consumer will only perceive when compared side by side. Examples of significant and insignificant differences have been included in the Common Practice. It will be seen that quite minor differences will be considered significant.
The new Common Practice applies to (1) priority claims, (2) relative grounds for refusal and to (3) determining genuine use, as follows:
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Priority claims: A trade mark filed in black & white and/or greyscale, from which priority is claimed, will NOT be considered identical to the same mark filed in colour with the exception: “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.
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Relative Grounds for Refusal: An earlier trade mark registered in black & white and/or greyscale is not identical to a later filed colour version of the mark, unless the differences in colour are insignificant.
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Genuine use in opposition and invalidation proceedings: The use of a colour version of a trade mark registered in black & white and /or greyscale is acceptable for the purposes of establishing genuine use where the change in colour does not alter the distinctive character of a mark.
The Common Practice provides the following criteria:
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The word/figurative elements coincide and are the main distinctive elements;
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The contrast of shades is respected;
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Colour or combination of colours does not have distinctive character in itself; and
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Colour is not one of the main contributors to the overall distinctiveness of the mark.
In this case, marks only registered in black & white but used in colour may be vulnerable to cancellation if the trade mark owner fails to prove genuine use of the mark as registered.
In light of these new developments, trade mark owners should review their European trade mark portfolios (in particular trade mark registrations which are more than 5 years old which would be subject to proof of use in opposition and invalidation proceedings) as soon as possible and for their most important trade marks registered only in black & white but used in colour, they should consider filing new applications for the colour versions. When filing a new trade mark application, it is worth considering filing not only the main colour version of the mark but also a black & white or greyscale version to cover all colour combinations should it be necessary to rely on the latter during proceedings before a national court where the Common Practice has not been implemented.
It should be noted that the new Common Practice does not affect infringement cases.
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