Previously, a UK or Community black and white trade mark registration would provide protection for the registered mark in all colours. However, the position has changed following the release of a Common Communication of the Practice of the Scope of Protection of Black and White Marks by OHIM. The UK IPO has implemented the Common Communication in the UK.
This will have a considerable impact on companies that only own black and white registrations for their trade marks. The Common Communication changes the position in relation to (i) genuine use of a black and white mark, (ii) the grounds for opposing trade mark applications and (iii) claiming priority from an earlier black and white registered mark.
In relation to genuine use, a colour version of a trade mark registered in black and white will only be acceptable for the purpose of establishing genuine use when it does not alter the distinctive character of the mark. This will only be where:
- The figurative/word elements coincide and are the main distinctive elements;
- The contrast of shades is respected;
- The colour or combination of colours does not have distinctive character in itself; and
- The colour is not a main contributor to the overall distinctiveness of the mark.
In relation to the grounds for opposing a trade mark application, an earlier black and white trade mark registration will not be considered to be identical to the same mark in colour unless the difference in colour is insignificant. If the difference in colour is significant, the opposition will need to be based on the ground that the marks are similar instead of identical and a likelihood of confusion will need to be established. An opposition based on this ground is not such a straightforward opposition.
OHIM has given the below example of where the difference in colour is insignificant:
OHIM has given the below example of where the difference in colour is significant:
In relation to claiming priority from an earlier black and white registered mark, it will no longer be considered identical to the same mark in colour unless the difference is insignificant. As marks must be considered identical to be able to claim priority, the impact of this rule change is considerable for those wishing to base other trade mark registrations on an earlier black and white registered mark.
Those who have historically registered their marks in black and white should review their portfolios and determine if they have any device marks that are regularly used in colour. If so, it would be worth considering whether to file new applications for the colour version of these marks. There is a risk that black and white registrations over five years old may be revoked for non use because use of the mark in colour is held not to be genuine use.
For more information about the issues in this article or to find out more about how the Commercial & Technology team can help you please contact Chloe Fernandez on 0118 952 7144 or email [email protected].
Consistent with our policy when giving comment and advice on a non-specific basis, we cannot assume legal responsibility for the accuracy of any particular statement. In the case of specific problems we recommend that professional advice be sought.