Legal Alert – The EU Trademark Office (OHIM) Changes the Scope of Protection for Black and White Marks
On April 15, 2014, The EU Trademark Office (OHIM) and several European trademarks offices (European Trade Mark and Design Network) established a common communication which targets to harmonize the scope of protection for black & white (B&W) and/or grey scale trademarks. Finland, France and Italy have not implemented the common practice.
The Common Practice took effect on 2 June 2014 and will have effect on EU trademark registrations and applications retroactively.
Three primary change
1. Use requirements
An EU trademark registration shall be taken into use within 5 years of its registration or it will become subject to revocation. According to the new practice, when assessing genuine use, a change only in color does not alter the distinctive character of the trademark, as long as the following requirements are met:
a) the word/figurative elements coincide and are the main distinctive elements;
b) the contrast of shades is respected;
c) color or combination of colors does not possess distinctive character in itself and;
d) color is not one of the main contributors to the overall distinctiveness of the mark.
The new practice means that if a trademark registration is black & white (and unless the above criteria can be considered fulfilled) there is a risk that use of the black & white trademark registration only in color will not be taken into consideration when assessing genuine use. This may lead to revocation of the black & white registration.
A trademark in B&W or greyscale from which priority is claimed is not considered identical to the same mark in color, unless the differences in color are so insignificant that consumer will perceive them only upon side by side examination.
3. Relative grounds
With regard to relative grounds of refusal, an earlier trademark in B&W or greyscale is not considered identical to the same mark in color, unless the differences in color are so insignificant that consumer will perceive them only upon side by side examination.
Additional information regarding the new common practice treatment of black & white trademarks will be included in the forthcoming 2014 update to the OHIM Guidelines.
In the meantime, EU trademark owners should determine whether they need to register in color those marks which are currently only registered in black and white. Similarly, potential applicants need to consider how they will use their new trademarks, in color or in black and white, and register them in accordance with the use taking into consideration the distinctive elements of the mark. Failure to do so may result in OHIM rejecting priority claims as to those marks in color or render those marks subject to cancellation due to non-use.