Both the UK and European trade mark registries have recently released guidelines for the treatment of black and white and greyscale trade marks. This has occurred against the backdrop of the case of Specsavers International Healthcare Ltd & Others –v- Asda Stores Ltd (“the Specsavers Case”) which was referred to the Court of Justice for the European Union (“CJEU”) with questions regarding the infringement of black and white trade mark registrations which are actually used in colour.
Historically, there has been some uncertainty over the treatment of marks which are registered in black and white or greyscale but are used in colour. There has also been a split in attitudes, with some registries adopting the ‘black and white covers all’ approach where the registration of a mark in black and white covers all colour combinations, and others using the ‘what you see is what you get’ approach where the protection only covers the mark as registered, i.e. in black and white.
Following the Specsavers Case, the Office for Harmonization in the Internal Market (OHIM) which governs all Community trade marks, has released guidelines on black and white trade marks and attempted to harmonise the two approaches set out above. The guidelines state that:
- When considering conflicts with earlier rights and priority, an earlier mark which is registered in black and white or greyscale will not be identical to a later colour mark if the differences in colour are not insignificant, i.e. are noticeable by the reasonably observant consumer comparing the marks side by side;
- On the issue of genuine use of a mark, use in colour of a black and white or greyscale mark will only constitute genuine use if it does not alter the distinctive character of the mark, i.e. if:
- the main distinctive element of the mark is not colour;
- the colour does not possess its own independent distinctive character;
- the use of colour does not contribute to the overall distinctiveness of the mark; and
- the different shades in the mark are replicated in the colour mark.
The UK IPO has also released a practice note in response to the Specsavers Case which states that colour will not be considered when considering likelihood of confusion if the earlier black and white or greyscale mark has not been used, or if it has been used, the extent and consistency of the use has not led to the colour being part of the distinctive character of the mark. Therefore, the UK IPO will only consider colour if the use of the mark in colour has been consistent and significant.
In the Specsavers Case, the CJEU held that although Specsavers’ registered trade marks were in black and white, having used them significantly in green meant that the use of a similar mark by Asda in the same green colour could result in a finding of trade mark infringement. This was despite the fact that the words in both marks were different; Asda used “ASDA Opticians” in two separate green ovals and Specsavers’ trade marks used the word “Specsavers” written in two overlapping green ovals.
To some extent the guidance from the UK IPO and OHIM does seem at odds with the finding of the CJEU in the Specsavers Case, however the guidelines are only applicable to registry proceedings and the court is able to assess the issue of infringement itself with the guidance of case law.
Roy Crozier, a Partner in the Intellectual Property team at Clarke Willmott highlighted the potential effects of these guidelines to brand owners by saying “brand owners should now, and continually, undertake a review of their trade marks and how they are being used, to ensure that they have the best rights to enforce against third party infringers. There is the potential with the new guidelines that trade marks could become vulnerable for non-use if a black and white mark is actually being used in colour, however there is also the possibility that including colour in a registered trade mark could limit its enforcement. It is therefore important to strike the right balance which should be considered on a case by case basis”.