The scope of protection given to black, white or grey trademarks will change as a result of a recent communication issued by the European Trade Mark and Design Network.
The network, established by the Office for Harmonisation in the Internal Market, aims at standardising practices and reducing differences in the treatment of trademarks and designs across the EU.
The need for a convergence of practice arose as a result of differing approaches in member states regarding trademarks registered in black and white.
Some countries apply the ‘cover all’ approach, whereby black and white trademarks are considered to be protected in colour. Black and white marks are often used as staples of trademark portfolios in order to cover all possible colours of logos and figurative marks.
Other countries apply a more restrictive view of black and white trademarks, thus creating a distinction within the EU. Much discussion was occasioned by the 2013 ruling of the Court of Justice of the European Union in a case filed by Specsavers against Asda, which reinforced the benefits of registering a trademark in black and white in order to provide broad protection for all uses in colour.
The different practices and interpretations caused confusion for applicants applying for a mark in multiple offices due to legal unpredictability. It was in this light that the communication was issued.
The communication lays down that a black and white trademark will not be considered as identical to the same trademark in colour, unless the differences in colour or in the contrast of shades are insignificant.
This is important when it comes to oppositions made by proprietors of an earlier trademark.
Under EU legislation, a trademark cannot be registered if there exists a likelihood of confusion with an earlier trademark because of its similarity or identity with the earlier trademark, and the identity or similarity of the goods or services covered by the trademarks.
Accordingly, in an opposition against a trademark application filed in colour, where the earlier mark is filed in black and white, the earlier mark will not be considered identical to the colour version.
A trademark filed in black and white is not identical to the same mark filed in colour
So black and white marks have a much narrower scope of protection than previously assumed.
This change does not mean that black and white marks cannot be used to successfully oppose an application to register a colour variant of the mark.
It means that a trademark proprietor will now have to prove that there exists a likelihood of confusion between its mark and the colour variant, rather than relying on the absolute protection afforded to identical marks.
In addition, in the assessment of prior use, the communication establishes that the earlier trademark filed in black and white is not identical to the same mark filed in colour, unless the differences in colour are so insignificant that they would go unnoticed by the average consumer – in other words that a reasonably observant consumer would not notice unless examining the marks side-by-side.
Another important aspect that the communication addresses is the use of a trademark. In Europe, a trademark that has not been put to genuine use for more than five years in the country in which it is registered can be revoked unless there are proper reasons for non-use. The use of a trademark in a slightly different form to the registered form can count as ‘genuine use’ of that trademark.
The recent communication deems that a colour change does not alter the distinctive character of the trademark as long as the contrast of shades is respected and the colour does not have distinctive character in itself nor is it one of the contributors to the overall distinctiveness of the sign.
The intention behind the communication was to ensure consistency in trademark practices across Europe, but several member states are not participating or are refusing to implement the changes.
Undoubtedly the communication introduced some highly significant changes.
In some jurisdictions, trademarks holders may need to review their trademark portfolios, particularly where colour is a distinctive component of their brand, and especially where it is used as a logo.
Josette Grech is an associate at Guido de Marco and Associates.