This is designed to address the uncertainty arising from the disparity in the scope of protection afforded to marks registered in B&W by different IP Offices. Some Offices have previously adopted the approach that B&W covers all colour and others have limited protection to the mark as registered, that is, B&W only.
In summary, the common practice consists of three parts, priority, relative grounds and genuine use, and deals with the following questions:
- Is a trade mark in B&W and/or greyscale from which priority is claimed identical to the same mark in colour?
- Is an earlier trade mark in B&W and/or greyscale identical to the same mark in colour?
- Is the use of a colour version of a trade mark registered in B&W/greyscale (or vice versa) acceptable for the purpose of establishing genuine use?
The answer to the first two questions is that a mark in B&W/greyscale is not identical to the same mark in colour unless the differences in colour are insignificant. An insignificant difference between two marks is defined as a difference that a reasonably observant consumer will perceive only upon side by side examination of the marks.
With regard to genuine use, a change only in colour does not alter the distinctive character of the trade mark on condition that:
- the word/figurative elements coincide and are the main distinctive elements;
- the contrast of shades is respected;
- colour (or combinations of colour) does not possess distinctive character in itself; and
- colour is not one of the main contributors to the overall distinctiveness of the mark.
The new practice comes into effect within 3 months from its publication on 15 April 2014 but will be implemented on different dates in different jurisdictions. In the UK this will be from 15 July 2014 and before OHIM this will be 2 June 2014. Whether the new practice affects all pending marks and proceedings on the implementation date or only those filed after the implementation date varies from country to country. Not all IP Offices will be implementing this common practice. The Swedish, Danish and Norwegian offices have opted out due to legal constraints and Italy, France and Finland have not participated in the project. Furthermore, a number of issues concerning colour marks versus B&W/greyscale are outside the scope of the project so have not been addressed.
Nevertheless, the adoption of a common practice across most of the EU on these three areas provides clarity and legal certainty for the IP Offices themselves, practitioners and trade mark owners alike so should be welcomed.