New practice on the scope of protection of Black and White Marks

United Kingdom

This article was produced by Olswang LLP, which joined with CMS on 1 May 2017.

Following the decision in Specsavers International Healthcare Limited and Others v Asda Stores Limited(Case C-252/12), which concerned the infringement of a Black & White (B&W) registration that had been used extensively in a particular shade of green, OHIM and various European national trade mark offices decided to revise and adapt their trade mark practices in relation to assessing the scope of protection of B&W marks. This process formed part of the OHIM Convergence Programme to harmonise Trade Mark and Design Law practice in the Trade Mark Offices of the EU.  As different Offices had previously been applying different practices in relation to B&W marks, it was difficult for trade mark owners and practitioners alike to know the scope of protection of B&W registrations throughout the EU as this differed from country to country.

Until recently it had been common practice before the UKIPO and OHIM (as well as other offices) that a trade mark filed in B&W prevented use and registration of an identical or similar mark in colour.  Although this is still largely the case, the UKIPO and OHIM offices have recently implemented a new practice in relation to how colour, B&W and greyscale marks should be interpreted in relation to priority claims, relative grounds examination and genuine use. (Click here to view the new practice guidelines on B&W marks).

For priority claims, where the later-filed application is filed in colour and claims priority from an earlier application filed in B&W, the later mark will generally not be considered as identical for the purposes of the priority claim unless the difference is so insignificant that it would likely go unnoticed. If the marks are not considered identical, the priority claim will fail and the application will be effective from the actual filing date, not from the earlier priority date. Identical therefore means identical.

In terms of relative grounds examinations (which also extends to opposition proceedings) and evidence of genuine use, the new practice may have far reaching implications for the brand owner when trying to defend or enforce their trade mark rights.  As use of the mark in a different form to that registered will not be considered genuine use if the distinctive character of the mark is altered, such a registration may not be opposed to later applications or may not prevent use of a similar mark by a third party and furthermore, the registration may itself become vulnerable to revocation for non-use. While there is no clear guidance on this new practice and each case will be considered on its own merits, we encourage brand owners to consider how their mark is intended to be used or is being used prior to filing a new trade mark application where colour is likely to be a significant element of that trade mark. Whether or not the application should be filed  in B&W or in colour will depend on how the trade mark owner intends to use it.

Overall, we advise brand owners that where the mark is to be used or is being used in B&W or in a variety of different colours over time with no particular colour used more significantly than another, we suggest filing the application in B&W.  However, if the mark is intended to be used or is being used in a particular colour or combination of colours, we suggest filing the mark in that colour(s).