The scope of protection afforded to black and white (“B&W”) marks has been the subject of much discussion following the decision of the Court of Justice of the European Union (“CJEU”) last year in Specsavers International Limited and Others v Asda stores Limited (“Specsavers v Asda”). It is an important issue as B&W marks are often used as staples of trade mark portfolios in order to cover all possible colours of logos and figurative marks (in much the same way that word marks are used to cover all potential stylisations of words).
A recent Common Communication has articulated the new practice that OHIM and the national IP offices (that are participating in the Convergence Program; such as the United Kingdom) will follow in their treatment of B&W marks. Disappointingly, the new practice will result in a narrower scope of protection.
Specsavers v Asda
Back in April 2012, the Court of Appeal referred several questions to the CJEU. Of particular interest was the question concerning whether use of a B&W mark in a specific colour has any relevance for infringement purposes.
The CJEU held that colour will only be a relevant factor in assessing whether there is a likelihood of confusion with, or whether unfair advantage has been taken of, a B&W mark if it has been used extensively by the proprietor in a particular colour (or combinations of colours) with the result that it has become associated in the mind of a significant proportion of the public.
This caveat is key as it means that B&W marks are not interchangeable with colour marks. The wording “associated in the mind of a significant proportion of the public” is important as it mirrors the wording used by the CJEU in General Motors Corporation v Yplon SA for the definition of “reputation”. Colour will, therefore, only become a relevant factor in infringement cases once the extent and consistency of use is sufficient to generate the equivalent of a reputation in that colour.
This judgement was generally seen as good news for brand owners as it reinforced the benefit of registering a trade mark in B&W in order to provide broad protection for all uses in colour. The added bonus being that it was also possible to rely on a claim of enhanced distinctiveness in a particular colour acquired through use (without needing to re-file in that colour).
Common Communication of the Common Practice of the Scope of Protection of Black and White Marks
Following the Specsavers v Asda decision, the “Common Communication on the Common Practice on the Scope of Protection of Black and White Marks” was issued on 15 April 2014. The change in practice will affect the way that OHIM, as well as the participating national IP offices (including the United Kingdom), will treat B&W marks.
It is worth remembering that the Common Communication is merely a statement setting out the participating offices’ practice. The scope of protection afforded to B&W marks is a matter of law and ultimately it is for the relevant courts to decide. In the past, several practice statements have fallen foul of court judgements. For example, OHIM’s “class-heading-covers-all” approach was overruled by the CJEU in IP TRANSLATOR and the UK IPO’s acceptance of the wording “predominant colour” was found to violate the definition of “a sign” by the Court of Appeal in NESTLÉ v CADBURY.
The need for a convergence of practice was based on a division in way that B&W marks were treated by national IP offices. Some, including the United Kingdom, followed a “B&W covers all” approach (under which a B&W mark is deemed to cover all colours) whereas others follow a “what you see is what you get” approach (meaning that a B&W mark only covers black and white). Unfortunately, the common practice is a halfway house compromise that is unsatisfactory.
The common practice will affect 1) the definition of identity for relative grounds oppositions and cancellations, 2) what constitutes genuine use, and 3) priority claims. Each will be dealt with in turn. It does not, however, encompass infringement, acquired distinctiveness, the similarity between colours, or colour marks per se.
The common practice states that a B&W mark is not identical to the same mark in colour unless the differences in colour are insignificant. An insignificant difference is what would not be perceived by the reasonably observant consumer upon a side by side examination of the marks.
This flies in the face of the current approach in the United Kingdom where, as explained by Lord Justice Kitchin in the Court of Appeal decision in Specsavers, “A mark registered in black and white is… registered in respect of all colours”. The new practice renders this statement inaccurate and, disappointingly, B&W marks now have a much narrower scope of protection.
Of course, this change does not mean that B&W marks can’t be used to successfully oppose an application to register a colour variant of the mark. The difference is that a trade mark proprietor will now have to prove that there exists a likelihood of confusion (rather than relying on the absolute protection afforded to identical marks / identical goods or services), which is a more difficult and cumbersome task.
Use of a mark in a form differing from the one registered will constitute genuine use if it does not alter the distinctive character of the trade mark.
The new common practice states that a change in colour will not alter the distinctive character of the mark as long as the following requirements are met:
• the word/figurative elements coincide and are the main distinctive elements;
• the contrast of shades is respected;
• the colour or combinations of colours does not possess a distinctive character in itself; and
• colour is not one of the main contributors to the overall distinctiveness of the mark.
This is another disappointing change as it increases the risk that B&W marks that have been on the register for over 5 years may be liable to revocation. This is particularly pertinent if the mark is only ever used in colour and colour plays an important role in the mark.
Lastly, the Common Communication states that for the purpose of claiming Priority under the Paris Convention a B&W mark is not identical to the same mark in colour unless the differences in colour are insignificant.
Where does this leave us?
Whilst, following Specsavers v Asda, it was clear that B&W marks are not entirely interchangeable with colour marks, the new common practice means that the scope of protection afforded to B&W marks is narrower than previously thought. Furthermore, the new common practice has greatly increased the risk that B&W marks that have been on the register for five years may be vulnerable to cancellation based on non-use.
In light of these changes, and in order to gain maximum protection, we advise brand-owners to review their portfolios and, where necessary, re-file B&W marks in colour. This is particularly relevant for proprietors of B&W registration that are used in colour, where the colour is a distinctive element.
For new filings, we recommend filing both B&W and colour versions of the mark in order to ensure that you are in the strongest position.
For further information, please contact Felicity Hide or your usual Boult Wade Tennant Advisor.