• Professional News
  • 02 October 2014

Black and white trademarks may have to be re-registered

A new practice from the EU may result in black and white trademarks no longer being identical to the same trademarks in colour. Black and white versions of trademarks may therefore have to be re-registered.

Since 15 April 2014, the Office for Harmonisation in the Internal Market (Trademarks and Designs) (OHIM) and a number of national intellectual property offices in the EU have changed their practice with respect to trademark registration. The new practice may imply that registered black and white trademarks must be registered again in colour.

The change in practice is an element of the harmonisation of the European practice for when a black and white or greyscale trademark is identical to the same trademark in colour.

Different practices within the EU
According to the practice so far, the protection of black and white and greyscale trademarks in the EU is uncertain. According to the practice of some countries, including Denmark, black and white trademarks cover the same marks in all colour combinations, but according to the practice of other countries, black and white trademarks do not protect colour versions of the mark.

As of 15 April 2014, OHIM and a number of national intellectual property offices have coordinated a change in practice. The change in practice is based on a "what-you-see-is-what-you-get" principle, and, as a consequence, black and white trademarks no longer always cover the same marks in colour.

The change primarily affects priority applications, the assessment of relative grounds for refusal and fulfilment of the obligation to put the trademark to “genuine use”.

Consequences of new practice
In the future, an application for a colour version of a black and white or greyscale trademark claiming priority from an earlier black and white or greyscale mark will only be regarded as identical to the earlier black and white or greyscale trademark and thereby registered with the priority applied for if the difference in colour and any greyscale shades is 'insignificant'.

This means that the possibility of a rights holder to assert the usual six months' priority will be lost, if the earlier registered trademark is black and white and the later trademark for which registration with priority is applied for is in colour.

Older rights
Similarly, a colour version of an already registered black and white or greyscale trademark will be considered identical to the older black and white or greyscale trademark only if the difference in colour and any greyscale shades is insignificant.

Only insignificant colour differences will then result in a later trademark in colour being considered identical to an older black and white trademark.

Thus the practice changes from the viewpoint that black and white trademarks cover all colour combinations. It is significant in opposition and cancellation cases whether identity may be established as in such case, no evidence of likelihood of confusion needs to be produced, meaning that in such case, there is no burden of proof to satisfy.

Genuine use
With respect to the obligation to put the trademark to genuine use, the use of a colour version of a registered black and white trademark will be recognised only if the colour version does not alter the distinctive character of the trademark.

The change in practice lists four conditions as to when the distinctive character of the mark is not affected: 

  • When the mark's figurative or word element is the main distinctive element of the trademark
  • When the trademark's contrast of shades is respected
  • When the colour or combination of colours is not distinctive in itself
  • When colour is not one of the main contributors to the overall distinctiveness of the trademark.

However, the change in practice does not consider whether a colour version of a trademark will be regarded as identical to the same trademark in black and white or greyscale.

Participating countries
In spite of the objective of the change in practice being a harmonisation of the field, the new practice will be implemented in the participating countries only.

Denmark, Norway and Sweden do not participate due to national legislation resulting in black and white trademarks covering the same marks in all colours and colour combinations. The change in practice cannot be carried out in these countries without a change in legislation. Furthermore, France, Italy and Finland have chosen not to participate.

In effect, the changed practice will lead to changes in five EU countries, while the remaining 17 countries will not change practice.

Bech-Bruun recommends
In a number of fields, the change in practice implies a more narrow scope of protection of black and white or greyscale trademarks than former practice.

As not all of the countries' intellectual property offices have adopted the change in practice, the change further implies a risk of different protection of the same trademark in different countries.

Therefore, in the future, trademark holders should register their trademarks in both colour and black and white versions in order to obtain the most comprehensive protection in the participating countries.

Moreover, holders of black and white trademarks should re-register black and white trademarks in colour versions to the extent that the trademarks are used in one or more colour versions.

Example: An insignificant difference
"An insignificant difference" is defined by OHIM and the national intellectual property offices as: A difference that a reasonably observant consumer will perceive only upon a side by side examination of the two trademarks.

Figure 1   Figure 2
 

Figure 1 is an example of an insignificant difference which, according to the new practice, will result in the two trademarks being considered identical.
Figure 2, on the other hand, will not be considered identical to the trademarks in Figure 1, as the addition of colour alters the overall impression of the trademark.

For further information, please contact Claus Barrett Christiansen, partner, clb@bechbruun.com or Pernille Gaarskjær, junior associate, png@bechbruun.com

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