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June 02, 2014 European Trade Mark and Design Network
OHIM implements the agreed common practice on black and white trade marks in its Guidelines
In the framework of the European Trade Mark and Design Network the Office and a number of Trade Mark Offices in the European Union have agreed on a common practice with regard to black and white (B&W) or greyscale marks as compared with coloured versions of the same sign.
The participating offices closely analysed three important questions essential to handling trade marks in B&W and/or greyscale:
- Is a trade mark in B&W and/or greyscale from which priority is claimed identical to the same mark in colour?
- Is an earlier trade mark in B&W and/or greyscale identical to the same mark in colour when assessing relative grounds?
- Is the use of a colour version of a trade mark registered in B&W/greyscale (or vice-versa) acceptable for the purpose of establishing genuine use?
On 15/04/2014, the Common Communication on the Common Practice was published in the Office web site. The next step is to reflect the agreed principles in OHIM's Guidelines.
Impact on the Office practice
The Common Practice will not entail major changes for Office practice. With regard to Relative Grounds and Proof of Use it merely explicitly reflects prior Office practice. The major impact affects priority, as the Office in the future will accept priority claims that it previously would have objected to.
A preliminary overview of the impact of the agreed principles on the Office trade mark practice was included in the Alicante News November 2013 issue.
The KC Relative Grounds and the KC Proceedings have worked together to reflect the agreed practice in the Office Guidelines. As a result, the following sections of the Guidelines have been updated:
- Part B, Examination, Section 2 Examination of formalities: the previous practice of the Office when assessing priority claims was to object if there was any difference in the appearance of the marks, including presentations in differing colours. Following the implementation of the Common Practice, the scope of what is considered "identity" will be broader. A trade mark filed in B&W and/or greyscale, from which priority is claimed, will generally still not be considered identical to the same mark filed in colour. However, if the differences in colour or in the greyscale are so insignificant that they could go unnoticed by the average consumer, the marks will be considered identical. The Guidelines now include examples specifically created for the Common Principles. Furthermore, a reference to the recent judgment of the General Court in T-623/11 ‘Sobieraj (MILANÓWEK CREAM FUDGE)' has been added.
- Part C, Opposition, Section 2 Identity and likelihood of confusion, Chapter 3 Comparison of Signs: this part of the Guidelines did not expressly address the issue of identity when the only difference between the signs regarded the change from B&W or greyscale to colour. Therefore, the amended Guidelines now include a new sub-section, which deals with the comparison of an earlier B&W or greyscale mark with a colour mark application.
As agreed in the context of the Convergence Programme, the Office will consider that the differences between an earlier B&W or greyscale mark and a coloured version of the same sign will normally be noticed by the average consumer with the consequence that the marks are not considered identical. It is only under exceptional circumstances that the signs will be considered identical, namely where the differences in the colours or in the contrast of shades are so insignificant that a reasonably observant consumer will perceive them only upon side by side examination of the marks. In other words, for the finding of identity the differences in colour of the signs in question must be negligible and hardly noticeable by an average consumer. The Guidelines now also add some of the examples specifically created for the Common Principles.
Finally, a reference to the recent judgment of the General Court in T-623/11 ‘Sobieraj (MILANÓWEK CREAM FUDGE)' has been added. In the context of an opposition case, the Court considered that a trade mark registered in B&W does not cover all colours and, thus, confirmed the findings of the Common practice.
- Part C, Opposition, Section 6 Proof of use: the section on "use of the mark in forms different from the one registered" already gave guidance on whether use of a registered B&W and/or greyscale trade mark which was used in colour (or vice-versa) was acceptable under Article 15 CTMR. The agreed practice does not change the Office practice in this respect but only clarifies it further.
The amended Guidelines now refer to the agreed criteria that changes in colour must fulfil in order not to alter the distinctive character of the trade mark as registered (the word/figurative elements coincide and are the most distinctive, the contrast of shades is respected, the colour or combination of colours does not have distinctive character in itself, and colour is not one of the main contributors to the overall distinctiveness).
The revised version of the Guidelines will enter into force immediately after publication of the Guidelines (02/06/2014). The new practice will be applicable to pending and future proceedings where a final decision has not been adopted yet:
- Cases where a priority claim has not been treated yet;
- Cases where a decision on identity of trade marks in relative grounds has not been adopted yet;
- Cases where a decision on genuine use has not been adopted yet.