If only the answer were so simple.
European trademark practice is evolving to take into account the decision reached by the Court of Justice of the European Union (CJEU) in Specsavers International Healthcare Limited and Ors v Asda Stores Limited (C-252/12), and the fall-out from this. The case focused upon assessing the likelihood of confusion where a trademark was registered in black & white, but used in a particular colour for which distinction was being claimed.
The trademark offices of the European Union and OHIM have agreed upon a Common Practice with regard to trademarks in black & white and/or greyscale covering priority, relative grounds, and genuine use with the aim of increasing transparency and certainty across the various European registries. Unfortunately for practitioners and rights holders alike, the Common Practice does not go so far as to determine or prescribe how the presence or absence of a colour claim within a trademark application or registration impacts upon theidentity or similarity of trademarks. This remains a factor to be determined on a case by case basis.
Looking in turn at the areas that are covered by the Common Practice, the paragraphs below set out broadly how the provisions will be applied by the various European trademark registries:
- Priority Claims: A trademark registered in black & white or greyscale will not be considered to be identical to a colour version of the same trademark for the purposes of claiming priority, unless the differences in the colours or shades are insignificant, and would not add any distinction in the eyes of the average consumer.This seems to accord with the current practice, and ought not to create any controversy. The rights owner would be unfairly broadening their rights if they were to claim priority for a black & white application based on a colour ‘base’. It can be assumed that the base and the priority application should match in all material aspects
- Relative grounds for refusal (in Oppositions): An earlier trademark registered in black & white or greyscale will not be considered to be identical to a later filed colour version of the trademark, unless the differences in the colours or shades are insignificant, and would not add any distinction in the eyes of the average consumer.Accordingly, if a registry decides that the difference between the black & white and colour versions of a trademark impacts upon the identity of those trademarks, they will dismiss a contention that the trademarks are similar; unless there is another aspect of identity or similarity that can be successfully argued. The change in practice may result in a narrower scope of protection for black & white trademarks in the eyes of the registries.
- Genuine Use: Use of a colour version of a trademark that is registered in black & white or greyscale maysatisfy the conditions that need to prevail to establish ‘genuine use’, provided the colour is not a distinguishing feature of the trademark, and other critical elements of the trademarks coincide i.e. the word/figurative elementGiven this stipulation, the claiming of ‘genuine use’ of a trademark that is registered in black & white or greyscale may be problematical if the colour, combination of colours or shading of the registered trademark contributes to the overall distinction of the trademark. Clearly, other factors will also be taken into account.
The Common Practice was implemented by OHIM on 2 June 2014 and will be applied retrospectively to all pending applications and proceedings. The UK IPO will be adopting the Practice from 15 July 2014 in respect of new applications and proceedings filed after that date.
How does the Common Practice impact upon brand owners and what steps should be taken now?
For new Applications, and if the available budget permits; brand owners should consider seeking protection for their trademarks in black & white and in colour, particularly where colour is a distinctive element of the trademark.
Where brand owners have existing black & white registrations that are used in colour, it would be wise to file fresh applications in colour, particularly where colour is a distinctive element of the trademark.
Under UK Trade Mark law there is a useful provision whereby a ‘series’ of two versions of a trademark can be filed within a single Application without incurring an additional cost. As such, it is possible to protect a black & white version and a colour version of the same trademark within a single Application, and maximise the scope of protection being secured. This option is not available for European (CTM) Applications.
Previously (where appropriate) our advice would have been to rely upon a black & white trademark to secure the broadest scope of protection. Now, we would say, if the colour matters – protect it!
The experienced team at Albright Patents LLP will be able to offer advice in all areas of trademark law and practice, including the best filing strategy to adopt to ensure that your rights are adequately protected. Please contact Katie Oliver (koliver@albright-ip.co.uk) or Julia House (jhouse@albright-ip.co.uk) .
