On the 15th of April 2014, OHIM released a Common Communication on the scope of protection of black and white trade marks. OHIM will implement the new common practice on 2 June 2014.The Communication will be implemented in the other participating offices, namely – AT, BG, BX, CY, CZ, DE, EE, ES, GR, HR, HU, IE, LV, LT, MT, OHIM, PL, PT, RO, SI, SK, UK.Italy, France and Finland have not participated in the project. The Swedish, Danish and Norwegian national offices opt out of implementation of the common practice due to legal constraints.The Communication confirms that so far there are two different approaches towards black and white (B&W) trademarks in the different national offices in the EU, namely:
– some national offices applied the “B&W-covers-all” approach under which trade marks in B&W have protection for all colours and colour combinations, thus maximum protection, colour-wise.
– other offices applied the “what you see is what you get” approach which gives protection to the mark as it is registered, meaning that trade marks which are filed in B&W are only protected as such.
The scope of the project and the Common communication is:
(a) determine whether the same mark in colour is considered identical with respect to:
- Priority claims
- Relative grounds for refusal
(b) determine whether use of the same mark in colour is considered use of the trade mark registered in B&W (considering also trade marks registered in colour but used in B&W).
The following items are out of the scope of the project and the Common communication: Determine whether a mark in B&W is considered identical to a trade mark filed in colour, with respect to priority claims and relative grounds for refusal (reverse question). The assessment of similarities between colours. Marks registered in B&W that have acquired distinctiveness in a specific colour due to extensive use. Color marks per se.The project and the Common communication do not deal with infringement issues.
1. PRIORITY CLAIMS
The principle is that a trade mark registered in B&W is not considered identical to the same sign in colour as regards priority claims. However, if the differences in colour are so insignificant that they may go unnoticed by the average consumer, the signs will be considered identical .
The following practical implications are drawn in the Communication with respect to priorities:
– If the priority mark has no colour claim and is depicted in greyscale, it will be identical to the same mark with a colour claim stating “greyscale”, unless it contains “significant differences”
– If the priority mark has no colour claim and is depicted in B&W, it will be identical to the same mark with a colour claim stating “black and white”, unless it contains “significant differences”.
On the contrary,
– If the priority mark contains a colour claim “black and white” and the application is filed in colour (other than the colours black and white) the marks will not be identical and thus the priority claim will not be accepted, unless the differences are insignificant.
2. RELATIVE GROUNDS FOR REFUSAL
According to Article 4(1)(a) of Directive 2008/95/EC :
“A trade mark shall not be registered or, if registered, shall be liable to be declared invalid:
(a) If it is identical with an earlier trademark, and the goods or services for which the trademark is applied for or is registered are identical with the goods or services for which the earlier trade mark is protected.”
The Communication states that:
” The differences between a B&W and a coloured version of the same sign will normally be noticed by the average consumer. Only under exceptional circumstances, namely where these differences are so insignificant that they may go unnoticed by an average consumer, will the signs be considered identical.
Therefore, it is not necessary to find a strict conformity between the signs. However, the difference in colour must be negligible and hardly noticeable by an average consumer, for the signs to be considered identical.”
According to Art.10.1 (a) of Directive 2008/95/EC:
“The following shall also constitute use within the meaning of the first subparagraph:
(a) use of the trademark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered”
The Communication states that:
“For the purposes of USE, a change only in colour does not alter the distinctive character of the trade mark as long as:
– The word/figurative elements coincide and are the main distinctive elements.
– The contrast of shades is respected.
– Color 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.”
Following the implementation of the Common Communication would be advisable trade mark owners to be aware of the set definitions and principles. Owners of black and white trade marks are advice to review their registrations in light of the way they actually use those trade marks in the marketplace and to consider whether they should strengthen their current protection. In addition, when considering filing in the EC, trade mark owners should take under consideration the differences in protection afforded by black and white registrations and colour registrations (in some cases would be advice able to file both forms to strengthen and protect properly their IP).
IP Consulting Ltd.