Black and White Trade Marks

Something which occurs quite regularly is a trade mark owner registering their trade mark in black and white but then going on to use that same trade mark in a particular colour or in a number of colours. The question which is asked here is how would this affect those trade mark owners’ rights? Recently, the UKIPO have issued guidance on the relevance of such use with regard to trade mark opposition proceedings.

The Court of Appeal in Specsavers v Asda (C-252/12) proposed a number of issues for the European Court of Justice to consider. The one of main relevance here is:

 “Where a community trade mark is not registered in colour, but had become associated in the mind of a significant portion of the public with a colour by use, the colour which a third party used to represent a sign alleged to have infringed that trade mark was relevant in the global assessment of the likelihood of confusion or unfair advantage under art 9 (1) (b) or art 9 (1) (c).”

The ECJ responded to this and stated that where a trade mark is not registered in colour, but has been extensively used in a particular colour or colours, then the colours in which a third party uses an allegedly infringing sign are relevant when assessing the likelihood of consumer confusion.

In an additional response, the Tribunal Practice Notice (TPN) 1/2014 has been issued to confirm that where colour is shown to be part of the distinctive character of the earlier mark, even though it is registered in black and white, then the potential use of the latter, opposed mark in that same colour or colours is a relevant factor. This is also the case if the opposition claims the later mark will take unfair advantage of the earlier mark’s reputation.

In the future, anyone who is looking to get a logo protected and are intending on using colour as a key distinguishing feature should definitely register this logo on colour as well as black and white. This will ensure that this feature is taken into account during any dispute, without the need for further evidence.

Harry Jeffries (Law Student)