Black and White Guidance on Black and White Trade Marks

Amongst many members of the intellectual property profession, the general view used to be that a client wanting to protect a trade mark which contained colour should protect the mark in black and white “to cover all colour combinations”. A recent joint guidance from the Office for Harmonization in the Internal Market (OHIM) and the patent offices of the European Union has highlighted that the true practice is a little more nuanced than this, with the result that portfolios may need to be reviewed. The rights provided by a greyscale mark were often said to extend to all colour combinations, whereas the new practice states that the use of a mark in colour will only be classed as identical to an earlier registration in black and white or greyscale where the difference is insignificant, meaning that the difference would only be noted by a reasonably observant consumer on side-by-side examination of the two marks. This does not prevent a trade mark owner from alleging a high level of similarity, but means that the marks will not be seen as purely identical and that theoretically a case may fail where confusion cannot be shown. This practice also flows through to the consideration of whether a mark which is registered in greyscale is deemed to be “used” by the trade mark owner where all the use is in an identical format, but in colour. This is relevant to the case where a third party alleges that your mark is vulnerable to being struck off the register for non use and that you have not used the registration.

The communication says that this will be deemed use so long as:

a) the word/figurative elements coincide and are the main distinctive elements;

b) the contrast of shades is respected;

c) colour or combination of colours does not possess distinctive character in itself; and

d) colour is not one of the main contributors to the overall distinctiveness of the mark.

The consequence of this communication is that trade mark owners should check their portfolios to check that they have the appropriate registrations. We should check that the protection will be appropriate and that, if called up, you could show that your marks have been used to the satisfaction of the relevant trade mark office. We would be happy to do this on your behalf, and would of course welcome any opportunity to discuss with you the appropriateness of your portfolio to your business needs.

For further information, please get in touch with your usual contact at Swindell & Pearson Ltd or [email protected].