Black and white trade marks
The Office for Harmonisation in the Internal Market (OHIM) has provided fresh guidance on black and white and greyscale trade marks in its recent publication "Common Communication on the Common Practice of the Scope of Protection of Black and White Marks (April 2014)."
The framework sets out an agreed common practice in relation to black and white or greyscale marks in comparison to their coloured counterparts. The three issues that are closely analysed are:
- Is a trade mark in black and white or greyscale from which priority is claimed identical to the same mark in colour?
- Is an earlier trade mark in black and white or greyscale identical to the same mark in colour when assessing relative grounds?
- Is the use of a colour version of a trade mark registered in black and white or greyscale acceptable for the purpose of establishing genuine use under Article 15 of the CTMR?
The Office practice is that a black and white trade mark from which priority is claimed will generally not be considered identical to the same mark filed in colour. The exception to this is if the difference in colour is sufficiently insignificant such as to go unnoticed by a consumer, in this case the marks will be considered identical.
An earlier black and white or greyscale mark is not identical to the same mark in colour. Likewise the exception to this is if the difference in colour is insignificant.
This has not been changed but merely clarified therefore use of a black and white or greyscale trade mark in colour will constitute genuine use of that mark provided that the mark's change in colour does not alter its distinctive character, this includes: the word/figurative elements coincide and are the most distinctive elements, the contrast of 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.
This guidance, which is now in force, effectively limits the protection available to black and white or greyscale trade marks and makes them more susceptible to actions of non-use. Trade mark proprietors should therefore be aware of this and take the relevant steps to protect their marks.
Further information about this guidance can be found on OHIM's website.
For more information on trade marks please contact the Black Morgan Intellectual Property team.