True Colours: As Clear as Black and White?
It was always received wisdom within the UK that registering a logo or stylised word design as a trade mark in black and white meant that all colours were automatically covered. A new common practice announced by Office for Harmonization in the Internal Market (OHIM) in November 2013 is challenging that approach in certain circumstances, and brand owners need to be aware of possible implications for their trade mark portfolios.
The project that led to the adoption of the common practice focused on whether trade marks filed in black and white and/or greyscale are identical to the same trade mark filed in colour as regards priority claims and relative grounds for refusal. The project also considered whether the use of a colour version of a trade mark registered in black and white (and vice-versa) is acceptable for proving genuine use. Importantly, the project did not consider the assessment of similarities between colours, use of black and white marks in colour for the purposes of acquired distinctiveness, or infringement issues (though the latter go hand in hand with the assessment of marks for the purposes of relative grounds of refusal).
Under the new common practice, identity between a trade mark filed in black and white and/or greyscale and the same mark in colour exists only when the marks are the same in all respects, or the differences are so insignificant that they may go unnoticed by the average consumer.
In short, if the sole differentiator between two marks is that one is black and white and/or greyscale, and the other is in colour, it must be assessed whether the addition of colour in and by itself alters the distinctive character of the black and white version of the mark sufficiently to render the colour version a different mark.
Unless the differences in colour are deemed to be insignificant, a trade mark filed in black and white will not be considered identical to the same mark in colour for the purposes of assessing priority. Although this seems to be a restriction on current practice, in reality it should represent a more flexible approach: previously the fact that a later mark was filed in colour would mean it could not claim priority from an earlier black and white filing; under the new practice, such a priority claim is possible as long as the addition of colour is not deemed to be a significant difference.
Relative grounds for refusal
For the purposes of assessing identity, differences in colour between two marks will be deemed to be noticeable to the average consumer (unless those differences are insignificant). This does not necessarily prevent a finding of confusing similarity between the same two marks.
When assessing whether a mark may constitute genuine use of a particular registration, a change in colour will generally not be deemed to alter the distinctive character of a mark as long as the following requirements are met:
- The marks comprise the same word/figurative elements;
- Those elements are deemed to be the most distinctive elements of the mark;
- The contrast of any shades is respected;
- The colour or combination of colours does not have distinctive character in itself; and
- Colour is not one of the main contributors to the overall distinctiveness of the mark.
The main risk here is that certain marks registered in black and white and/or greyscale for more than five years may now be vulnerable to attack on the grounds of non-use where they have only been used in colour.
The adoption by OHIM of the new common practice opens the door to complex questions regarding the assessment of trade marks in a number of contexts. These are necessarily related to the questions of priority, relative grounds of refusal and genuine use, such as when marks are to be considered identical/confusingly similar for the purposes of infringement.
OHIM is currently considering how to implement the new common practice. An amendment to its Guidelines for Examination is expected in due course.
Developments in the UK
The UK Registry has recently issued Tribunal Practice Notice 1/2014 (TPN) on a related topic.
Focusing on the guidance from the Court of Justice of the European Union (CJ) in Specsavers , the TPN confirms that, in the context of proceedings before the UK Registry, where colour is shown to form part of the distinctive character of an earlier mark (even if only registered in black and white), the potential or actual use of a later mark in the same colour will be considered to be a relevant factor in terms of assessing identity/confusing similarity and whether unfair advantage has been taken of the earlier mark. If the earlier mark has been filed only in black and white, evidence will be required to show that colour forms part of its distinctive character.
Similarly, evidence of existing use of the later mark in a different colour to the colour in which the earlier mark has been filed or used is not relevant: the UK Registry must take into account all potential uses of the later mark.
Finally, where an earlier mark filed in black and white has not been used (or it has been used in colour, but not to the extent that that colour forms part of the distinctive character of the earlier mark), colour will not be taken into account in assessing conflict with a later mark. Only the mark in its black and white form will be considered.
The take home message?
How national courts will apply OHIM’s new guidelines remains to be seen. Nevertheless, brand owners should consider filing colour versions of any trade marks for which only a black and white registration exists, but which are used in colour – particularly where the colour differentiation may be deemed to alter the distinctive character of the black and white version of the mark.
This filing strategy is supported by the position taken by the UK Registry in the TPN.
Where brand owners intend to claim that colour is an important or distinctive element in a particular trade mark, they should consider filing for protection of the mark in the coloured format. If budgets permit, the black and white version should also be filed to ensure the widest scope of protection.
Clearly the question of whether the addition of colour alters the distinctive character of a particular mark is open to interpretation, and a reasonable balance needs to be struck between the cost of filing new applications in colour and the potential risks of not doing so.
Your usual D Young & Co LLP advisor will be happy to discuss any concerns with you, and to assist with adopting an appropriate filing strategy for your specific trade mark portfolio.