A black and white issue
The Office for Harmonization in the Internal Market (OHIM) and several national IP offices in the EU, including the UK Intellectual Property Office and the German Patent and Trade Mark Office (DPMA), have agreed on a common practice regarding the handling of trademarks in black and white (B&W) and/or greyscale.
The common practice has been made public through a Common Communication on April 15, 2014 and has already taken effect in the offices implementing the new practice. In some offices such as OHIM and the DPMA, the new practice even applies retroactively, ie, to all pending applications and proceedings.
The need for a convergence of practice arose from the non-uniform way that B&W marks were treated by IP offices. In the past, some offices applied a “B&W covers all” approach (under which trademarks in B&W have protection for all colours and colour combinations), whereas others followed a “what you see is what you get” approach (meaning that trademarks filed in B&W are only protected as such).
Consequently, the aim was to harmonise practices between the offices and to increase transparency, legal certainty and predictability for the benefit of examiners and users.
It is worth noting that the common practice is and is likely to be common only to some extent. France, Italy and Finland did not participate in the project. Furthermore, Sweden, Denmark and Norway opted out of implementing the practice due to legal constraints. Apparently, these states are not in a position to adopt the change in practice without new legislation.
The new common practice
The Common Communication deals with the three aspects of priority claims, relative grounds for refusal and genuine use. The assessment of similarity between colours and infringement issues is explicitly excluded from the scope of the convergence project.
With regard to priority and relative grounds for refusal, under the new common practice an earlier trademark registered in B&W or greyscale is not identical to the same mark in colour, unless the difference in colour is insignificant. An insignificant difference between two marks is a difference that a reasonably observant consumer will perceive only upon side by side examination.
With regard to genuine use, the Common Communication deals with the question of whether the use of a colour version of a trademark registered in B&W/greyscale (or vice versa) is acceptable for the purpose of establishing genuine use. It has been agreed upon that a change in colour does not alter the distinctive character of the trademark as long as:
(a) The word/figurative elements coincide and are the main distinctive elements;
(b) The contrast of shades is respected;
(c) The colour or combination of colours does not possess distinctive character in itself; and
(d) The colour is not one of the main contributors to the overall distinctiveness of the mark.
Impact on trademark owners
OHIM states that the new common practice will not entail major changes to its practice. Nevertheless, the impact on trademark owners has been a matter of considerable debate. In particular, the requirements for the assessment of genuine use according to the common practice have been received critically.
On the one hand, a number of interested users are of the opinion that the common practice has a significant impact on the way trademarks are filed and used. Especially in view of above requirements (c) and (d), it is no longer possible to assume that use of any colour version always represents genuine use of a trademark filed in B&W.
"it is no longer possible to assume that use of any colour version always represents genuine use of a trademark filed in B&W."
Hence, there will be the risk that B&W marks that have been on the register for more than five years may be vulnerable to cancellation based on non-use. As a result, some users advise brand owners to review their portfolios and to re-file B&W marks in colour and, with respect to new filings, to file both B&W and colour versions of the mark to ensure that trademark owners are in the strongest position.
In accordance with this view, it could be argued that a strict “B&W covers all” approach would be better from a trademark owner’s perspective because filing a trademark in B&W would then not only protect the mark in colour but also allow its genuine use in colour. As a result, the required number of applications would be reduced.
On the other hand, the conclusion could be reached that no significant changes are to be expected because the common practice is based on the existing legal practice of European courts (see eg, MAD decision of the General Court of May 24, 2012; case T-152/11). Only in exceptional cases is the colour assumed to play such a prominent role that it represents a main contributor to the overall distinctiveness of the mark. Accordingly, there would be no “general” need to re-file B&W marks in colour.
All in all, the assessment of genuine use of a B&W mark by using a colour version of the mark is still open to interpretation and it remains to be seen whether the common practice will be confirmed by the Court of Justice of the EU (CJEU) or whether it will be overruled, as OHIM’s “class-heading-covers-all” practice was overruled in the IP Translator decision.
For the time being, trademark owners with B&W marks may consider new filings in colour particularly where the mark is mainly or only used in colour and colour is an important element of the mark. Especially in the case of figurative marks, such as logos, without word elements, this seems to be the safer alternative, as at least the colour mark is not put at risk of being revoked due to non-use.
The new filing in colour would not jeopardise maintaining or enforcing an existing B&W mark taking into account recent case law (see eg, CJEU, Proti decision, C-553/11) according to which the use of a trademark in a form that is different from the mark as registered may be sufficient to prove genuine use, even if the used mark itself is registered.
Fabian Müller is a partner at Uexküll & Stolberg, Germany. He can be contacted at: mueller@uex.de
