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New practice on trademarks: who said black or white are colors?

Published on: 29 August 2014
by Mr. Olivier Lombardo, Head of Trademarks at Dennemeyer & Associates, Luxembourg

The link between color, black and white (B&W) and greyscale trademarks and their respective scope of protection has been extensively and regularly discussed. Recently, the OHIM in Alicante and the participating trademark offices identified three essential questions and have agreed and adopted on April 15, 2014, a new Common Practice1 with regard to B&W or greyscale marks as compared to colored versions of the same sign.

1. Can a color trademark application claim priority of an earlier B&W or greyscale trademark?

When assessing priority claims, the previous practice of the Office was to object if there was any difference in the appearance of the marks such as the presentation in differing colors.

According to the adopted Common Practice, a trademark registered in B&W or greyscale, from which priority is claimed, will generally still not be considered identical to the same mark applied in color.

However, the scope of what is considered “identity” is now broader and if the differences in color or in the greyscale are so insignificant that they could go unnoticed by the average consumer, the marks will be considered identical.

Conclusion:

In the context of a priority claim, a trademark owner applying for a color trademark cannot claim priority from a B&W mark “unless” the addition of color is to be considered as an “insignificant” change that would go “unnoticed by average consumers”.

Numerous examples of acceptable priority claims have been added to the OHIM guidelines.

2. Can an earlier registered B&W or greyscale trademark be considered identical to a contested color trademark application?

Similar to the assessment for the priority claim, the Office considers that the differences between an earlier B&W or greyscale mark and a colored version of the same sign will normally be noticed by the average consumer and thus the marks shall not be considered identical.

Again, it is only under exceptional circumstances that the earlier B&W registration and the contested color application will be considered identical, namely where the differences in the colors or in the contrast of shades are so “insignificant” that a reasonably observant consumer will perceive them only by direct comparison of the marks side by side.

Therefore, for the marks to be considered identical, the differences in color of the signs in question must be “negligible and hardly noticeable to an average consumer” (as confirmed on 09/04/2014, by judgment of the General Court No. T-623/11, “Pico Food vs OHIM”).

Conclusion:

In the context of an opposition proceeding, the Court considered that an earlier registered B&W trademark does not cover all colors and, thus, confirmed the findings of the Common Practice that the difference between a prior mark in B&W and the same mark in color must be so “insignificant” it could go “unnoticed by the average consumer”.

In other words, instead of showing the trademarks to be identical, an opponent shall rather prove that there is a likelihood of confusion between a prior registered B&W or greyscale trademark and the same or similar mark applied in color.

3. Does the use of a color trademark constitute valid use of the same registered in B&W or greyscale?

The agreed practice does not change the former Office practice, concerning the question whether use of a registered B&W and/or greyscale trademark which was used in color (or vice-versa) is acceptable under Article 15 CTMR, but only clarifies the criteria that changes in color must fulfill in order “not to alter the distinctive character” of the trademark as registered:

  • the word/figurative elements coincide and are the most distinctive
  • the contrast of shades is respected
  • the color or combination of colors does not have distinctive character in itself
  • the color is not one of the main contributors to the overall distinctiveness.

Conclusion:

In the context of evidencing the use of a trademark, the use of a mark in color will only constitute genuine use of a B&W registered mark if the color does “not alter the distinctive character” of the mark.

Trademark owners of B&W or greyscale trademarks will have to show that the layout is identical, the contrasts or shading are substantially the same for both versions of the sign and the color is not a key distinctive element.

The practical impact

The Common Practice entails major changes with regard to priority, as the Office will in the future accept priority claims that it previously would have objected to.

Concerning filing and enforcement strategies, the practice according to which a logo registered in B&W or greyscale was considered sufficient to protect versions of the logo in any color is now outdated.

Therefore, trademark owners should carefully review their portfolio in order to identify assets where color is a key element and eventually proceed with subsequent color filings of their earlier B&W or greyscale registered trademarks.

For future filings, trademark owners should carefully determine together with their marketing department and legal counsel whether color is a key distinctive element and key part of their brand equity. In the affirmative, trademark owners should proactively consider registering these marks in color as well as B&W in order to take into account the distinctive character of the color in eventual opposition or cancellation proceedings.

The risk for trademark owners of relying on B&W trademarks is that the scope of protection of their trademarks in opposition proceedings won’t reach protection against color trademarks and that their earlier registered B&W or greyscale trademarks might be vulnerable to non-use.

With this evolution and the previous evolution concerning the scope of protection of class headings in the “IP Translator” case (19/06/2012, CJUE Case No. C-307/10), the OHIM draws step by step the future European trademark practice heading towards the principle “what you apply for is what you get”!