Harmonising Protection Of Black And White Trademarks In The EU

The intellectual property offices of the European Union, in their commitment to harmonise practices, recently published a Common Communication establishing a common practice on the scope of protection given to black and white trademarks in the EU.

The 15 April Communication is part of a first wave of projects under the umbrella of the EU Trademark and Design Network Convergence Programme. The programme, launched in 2011, aims to develop common practices to reach convergence in the way EU IP offices operate. It also aims to contribute to stronger IP protection in Europe, and support the progressive creation of a ‘European interoperable and collaborative network’.

The objective of the Common Communication on the Common Practice of the Scope of Protection of Black and White (B&W) Marks [pdf] is to converge the way in which different IP offices in the EU handle B&W trademarks in cases of priority rights, relative grounds for refusal, and genuine use.

The Communication seeks to enhance legal certainty and harmonise previously divided practices and interpretations on the scope of protection given to B&W trademarks in the EU.

The common practice on B&W trademarks will take effect in 23 IP offices in the EU within three months from publication of the Communication. Due to legal constraints the Swedish, Danish and Norwegian national offices will not implement the common practice. The offices of Italy, France and Finland did not participate in the project

The Office for Harmonization of the Internal Market (OHIM), which registers community trademarks in the EU, will implement the common practice on 2 June in Part B and C of the office’s Guidelines for Examination. The common practice will be applicable to all community trademark applications pending or filed after the implementation date.

As well, OHIM will apply the common practice to all proceedings pending or filed after the implementation date. Proceedings may include ‘oppositions, invalidities or revocations, dependent on the jurisdiction’.

Origins of the Initiative

Before the Communication, some national offices considered that B&W trademarks had protection for all colours and colour combinations of the mark. Other offices applied the ‘what you see iswhat you get’ approach and protected the trademark as registered, only in B&W.Applicants seeking trademark protection in multiple jurisdictions faced confusion. Moreover, the different interpretations led to legal unpredictability in cases of conflicting trademarks seeking registration in offices with different practices.

To harmonise practices on priority claims and relative grounds for refusal, the trademark offices of the EU approached the subject of identity between a trademark filed in B&W and the same trademark in colour.

Likewise, the project evaluated if using a trademark that was registered in B&W, in colour, could be considered genuine use of the B&W trademark. The Communication covers the subjects of priority, relative grounds, and genuine use in three parts.

The first part, according to the Communication, seeks to respond to the question “is a trademark in B&W and/or greyscale from which priority is claimed identical to the same mark in colour?”

According to the principles of priority, ruled by the Paris Convention for the Protection of Industrial Property of March 20, 1883, a person who has filed a trademark application in a state party to the Convention or to the Agreement establishing the World Trade Organization, can benefit from its application’s filing date, during a period of six months, to file a subsequent application to protect the same trademark in other contracting States. To claim priority, the trademarks need to be the same, identical.

Defining Differences in B&W and Colour

The Communication establishes that a trademark in B&W and/or greyscale is not identical to the same trademark in colour unless the differences in colour are insignificant. Thus, a B&W trademark can only be used to claim priority for the same mark in colour, if the differences in colour between the two marks are insignificant. What is an insignificant difference? The Communication makes clear that an insignificant difference is one that a “reasonably observant consumer” would perceive only when examining the trademarks side by side.

The Communication’s second objective is to determine whether a trademark in B&W and/or greyscale can be considered identical to the same mark in colour in the examination of relative grounds for refusal. Current regulation in the EU provides that a trademark cannot be registered or, if registered, be invalidated, if it is identical to an earlier trademark and both TMs cover the same goods or services. As in the case of priorities, the Communication establishes that an earlier B&W trademark cannot be considered identical to the same mark in colour, unless the differences in colour are insignificant.

The concept of identity in the common practice for relative grounds for refusal and priorities reflects the judgment of the European Court of Justice in case C-291/00, Diffusion SA and Sadas Vertbauder SA.

In 2003, the ECJ ruled that “a sign is identical with a trade mark only where it reproduces, without any modification or addition, all the elements constituting the trade mark or where, viewed as a whole, it contains differences so insignificant that they may go unnoticed by an average consumer.”

Lastly, the third part of the Communication aims to establish whether using a trademark registered in B&W, in greyscale or colour can be considered use of the B&W trademark. This part of the Communication refers to the legal requirement to use a trademark in the market after its registration.

With regard to genuine use, Article 10 of the Directive 2008/95/EC of the European Parliament and of the Council to approximate the laws of the Member States relating to trade marks states that a registered trademark can be subject to sanctions (such as revocation) if, within a period of five years from the date of its registration, the owner does not put the trademark in use, in connection with the goods or services that the trademark covers.

Further, the regulation on genuine use considers that use of the trademark in a different form from the one registered can also constitute genuine use, provided that the differing elements do not alter the distinctive character of the trademark. Therefore, it is not necessary to use the trademark strictly as registered: owners can use certain variations.

Regarding alterations in colour and particularly in B&W trademarks, the Communication establishes that it is necessary to examine on a case-by-case basis if the use of a B&W trademark, in colour or greyscale (and vice versa), alters the distinctive character of the registered trademark.

According to the Communication, it will be considered that a change in colour does not alter the distinctive character of the trademark if the following requirements are met: “the word/figurative elements coincide and are the main distinctive elements”; “the contrast of shades is respected”; “colour or combination of colours does not have distinctive character in itself”; “colour is not one of the main contributors to the overall distinctiveness of the mark.”

Angela Garcia M. is a guest contributor to Intellectual Property Watch. She holds a law degree from the Universidad de Lima, in her home country of Peru, a master’s degree in intellectual property law from the Universidad de Alicante-Spain, and a master’s degree in business administration from the Business School Lausanne-Switzerland. Her experience includes providing legal support to INDECOPI, the Peruvian IP Office, Organisation for a Geographical Indications Network, and the World Intellectual Property Organization.