Back to Black (and White)?

PUBLISHED: 7th July 2014

Photo to illustrate article

Important changes have been made to the assessment of black and white trade marks in Ireland and the EU.

As of 16 July 2014 the scope of protection given to black, white or grey (B&W) trade marks in Ireland will change. The implementation of the Common Communication on the Common Practice of the Scope of Protection of Black and White Marks (Communication) in Ireland and the EU means that trade mark owners and applicants will need to re-evaluate their portfolios of Irish and Community Trade Marks (CTMs). 

The Communication was issued by the European Trade Mark and Design Network.  The network was established by OHIM and the national intellectual property offices of EU member states.  It works to standardise practices, and reduce differences, in relation to trade marks and designs throughout the EU.  OHIM is the EU agency responsible for managing Community Trade Marks (CTMs).

The Irish Patents Office will apply the Communication in relation to all applications filed, and all proceedings initiated, after 16 July 2014.  At EU level, OHIM has been applying the Communication to applications and proceedings pending since 2 June 2014.

Businesses with Irish trade marks and/or CTMs should review their trade mark portfolios, particularly where colour is a distinctive component of their brand, and especially where it is used as a logo.

The Communication sets out a standard approach to B&W trade marks in the EU.  Brand owners should be aware that this means a new approach is required when filing trade mark applications, dealing with oppositions to registration and bringing priority claims.

Getting your priorities right: the Communication significantly alters priority claims.

An applicant who files a trade mark application with the Patents Office may be able to claim priority for the registration of his mark in circumstances where he has filed an earlier identical Community or international trade mark within six months of the Irish application. The key benefit of this is that the registration date for the Irish trade mark is retroactively applied to the date of the first trade mark. 

Prior to the Communication, the Patents Office took a fairly lenient approach in claims for priority where a coloured mark was being applied for and the earlier mark was registered in B&W. A strict approach will be adopted from now on: the Patents Office will require the applied for marks and the prior mark to be identical in colour in claims for priority, except where a national office issues a B&W document as an administrative technicality.  

Those submitting new trade mark applications to the Patents Office or OHIM should consider whether they have a priority claim in their application. They should also act quickly to protect existing colour marks used in EU countries to avoid another entity claiming priority.  Any brand owner who is unsure about whether they have a priority claim when filing an application should check with their adviser in advance – once the six month period expires, a right to claim priority automatically expires.

Existing trade marks: protecting marks against risks.

For optimum brand protection existing trade mark owners please take note of the following.

Risk of revocation based on use

The Communication increases the risk that B&W trade marks registered for longer than five years may be liable to revocation for non-use if the trade mark has only ever been used in colour and colour is central to its distinctiveness. This risk may be averted by filing a new trade mark application to protect the mark's colour usage. It is not possible to simply amend a trade mark.

Risks of oppositions by third parties

Owners of B&W marks will no longer be able to rely on the absolute protection afforded to identical or similar trade marks if there is an opposition against their marks, or if a third party applies to register a colour variant of an earlier mark.  B&W mark owners should act to ensure their brand is also protected in the colours of use so that the distinctive character of the colour is taken into account in any potential cancellation or opposition proceedings.

Narrower scope of protection for B&W marks.

The effect of the Communication means that a B&W trade mark will not be considered as identical to the same colour trade mark unless the differences in colour are insignificant.  This is an important change for trade mark owners to be aware of because until now, in Ireland, B&W marks were also considered be protected in colour.  The change may have a significant impact in assessments of new trade mark applications, when comparing the applied-for marks with earlier marks.  We anticipate that there will be an increase in objections to applications under section 10(2) of the Trade Marks Act 1996 – at least until the Communication has been fully factored into Irish trade mark practices.

The Communication does not change the legal test that must be satisfied to prove infringement of a trade mark by an unauthorised user.  However, it does change the emphasis overall on colour as a component of a trade mark.

A brighter future for brand owners? Watch this Space …

Practitioners and trade mark owners throughout the EU must deal with the challenges of adopting the best strategy to safeguard trade mark portfolios. The Communication presents two further complicating factors.  First, six out of the twenty-eight EU States EU member states are not implementing the Communication. Second, legal commentators are in disagreement as to the legal effect of the Communication and argue that the matter needs to be decided by the EU Courts.

 A ruling from the Court of Justice of the EU (CJEU) is the source of this dissent. In Case C‑252/12 Specsavers v. ASDA the Court reinforced the benefit of registering a trade mark in B&W in order to provide broad protection for all uses in colour, which runs contrary to the Communication. (Note that the case was being considered at the same time as the Communication was being drafted.)

In a preliminary reference to the CJEU from the English Court of Appeal, the CJEU was asked to rule on use of trade mark combinations and colours in a claim by Specsavers against Asda for trade mark infringement. Asda ran in-house opticians within its supermarkets and in its advertisements; it used logos which consisted of non-overlapping oval shapes with the written words ‘ASDA OPTICIANS’ on them in a lighter shade of green. Specsavers’ trade marks were not registered for a particular colour. The Court said that if a trade mark is not registered in colour, but the brand owner has used it extensively in a particular colour so that it has become associated in the mind of a significant portion of the public with that colour, so that it has become distinctive, this is relevant to the global assessment of both likelihood of confusion and unfair advantage.

But for now, act fast to protect your colour marks.

The Communication is a statement of practice by OHIM and national trade mark offices and it is the new standard to be adhered to in relation to B&W trade marks, unless and  until the courts or legislature decide otherwise.. Brand owners should assess their commercial needs and if they use a B&W trade mark in colour they should take action to minimise risks to their brand and their business.  Be vigilant.  Remember that time is of the essence in trade mark protection.  Businesses that neglect their trade mark portfolios run the risk of having to prove the distinctiveness of their trade marks in the future. That could mean a lengthy and uncertain process, which it would be better to avoid, commercially and legally. Regularising trade mark portfolios so that they are in accord with the Communication, would be much simpler and more cost-efficient in the long run.

This article was written by Jane O'Grady.

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