OHIM’s change in practice regarding black and white trademarks

The Office for Harmonization in the Internal Market (OHIM) has announced changes to the treatment of trade marks in colour. A common practice have been agreed upon by the trade mark offices of the European Union (EU) regarding trademarks in black & white (B&W) and/or greyscale. Earlier, there has been a division between the national offices regarding a B&W trade mark’s scope of protection. Some countries applied the ‘B&W covers all’ approach while others applied the ‘what you see is what you get’ approach, creating a distinction within the EU.

This new, common practice shall be implemented in all implementing offices before August 2014 (exact implementation dates vary by office). Some national offices within the EU opt out of implementing the common practice due to legal constraints. In Sweden for example, a B&W/greyscale trade mark covers all colours. These are legal constraints from a national statute which is still valid in Sweden and the country is therefore not in a position to implement the common practice. There are also a few countries which have not participated in the project. It should be noted that the common practice is regarding trade mark registration and scope of protection, and does not deal with infringement issues.

It has been established that a trade mark in B&W or greyscale is not identical to the same trade mark in colour, unless the differences in colour or in the contrast of shades are insignificant. This follows the decision in Judgement C-291/00 (paragraph 54) that ‘a sign is identical with a trade mark only where it reproduces, without any modification or addition, all the elements constituting the trade mark or where, viewed as a whole, it contains differences so insignificant that they may go unnoticed by an average consumer’. A difference is insignificant if a reasonably observant consumer would only notice the difference if examine the marks side by side.

A change in colour does not alter the distinctive character of the mark, as long as the contrast of shades is respected and the main distinctive elements of the mark are the word or figurative elements and these coincide. The colour or combination of colours must not give the new mark distinctive character and the colour must not be one of the main contributors of the mark’s overall distinctiveness.

This common practice is decided to be applied retroactively on all current trade mark applications. Applicants, and proprietors with already registered marks, may need to examine their current registrations to ensure they are still fully protected.

Malin Persson