The Office of Community Trademarks – OHIM and some national Offices published, in January of this year, a common communication on black and white trademarks.
What does it say? What are the implications in practice?
- A trademark in black and white will be treated as identical to a sign in colour if the difference between the two is so insignificant as to be unnoticed by the average consumer. Thus, if only a reasonably observant consumer will see a significant difference when comparing the two trademarks, then the difference will be treated as insignificant.
- The distinctive character of a trademark registered in black and white will not be changed by a change in colour provided that:
o The figurative elements are the same and remain as the main distinctive elements;
o The contrast of shades is respected;
o The colour or combination of colours does not have distinctive character in itself;
o The colour is not one of the main contributors to the overall distinctiveness of the trademark.
- If an opposition is filed, signs will only be deemed identical if the difference of colour is insignificant, i.e. hardly noticeable to the average consumer. Even if the signs are not identical, they may be considered as similar and a likelihood of confusion may be found to exist.
- For a priority claim, a trademark registered in black and white will not be treated as identical to the same trademark in colour, unless the difference in colour is insignificant.
In addition, there is regrettably some divergence with regards to the implementation date of this new common practice between OHIM (June 2, 2014) and the various participating national offices (e.g. July 15, 2014 for the UKIPO). Further, the different offices have not decided if this new practice applies to pending applications or only to those filed after the implementation date; but also whether it applies to pending proceedings or only to those initiated after the implementation date.
Finally, it remains advisable, based on the specifics of each case and with regards to the new common practice, that trademark owners register their trademarks in both black and white and colour, particularly when colour is a distinctive element of the trademark.