The scope of protection of black and white trademarks in the European Union has for many years not always been quite so “black and white”. In fact, decisions and approaches greatly varied between different European countries and offices resulting in this issue being subject to extensive and regular discussions. Whilst some countries approached the “black and white covers all approach”, where black and white marks enjoy protection in all colours and colour combinations, others applied the so-called “what you see is what you get” approach, where black and white trademarks are protected only for the colours and colour combinations that they are registered for.
As a result of joint efforts of National and European IP Offices under the European Trademark and Design Network the “Common Communication on the Common Practice of the Scope of Protection of Black and White (“B&W”) Marks” was established and published on April 15, 2014. The primary purpose of the Project was to eliminate legal and practical implications resulting from differences in scope of protection granted to black and white marks, such as lack of legal certainty, or high registration costs.
Essentially, other than outlining the scope, this Practice can be seen to have provided, at least in part, a uniform approach to three issues.
What is the Scope of the Common Practice?
Although the Common Practice is not legally binding, it has been implemented by 24 European IP Offices, of which 22 are located within the territory of the European Union. However, Sweden, Denmark, Norway, Finland, France and Italy did not implement the new order which partially hinders an overall success of the Project.
Furthermore, the Common Practice only applies to figurative trademarks leaving at the same time 3-D or colour trademarks unaddressed. Also, it is applicable, provided that the black and white trademark concerned has been registered without indicating any colour on the registration, so when a trademark is black and white, by default.
When can you claim a priority for a trademark based on an earlier black and white trademark?
To ensure that a new trademark is insignificantly different to an earlier black and white trademark you need to make sure that the difference of colours used is not too drastic.
The approach provided by the Common Practice goes in line with the reasoning of the Court of Justice in the Malinowek Cream Fudge Case. Accordingly, a scope of protection of black and white trademarks no longer follows the approach “black and white covers all” and therefore, does not extend to all colours.
In conclusion, ideally you should stick to dark shades of colours, such as dark blue, dark green, dark brown, that by an average person are likely to be considered identical to black on the one hand, and to bright shades of colours, such as light blue, light yellow, light orange, that by an average person are likely to be considered identical to white.
When can you oppose, or invalidate another trademark based on a prior black and white trademark?
Analogically to priority claims, you should prove that your earlier black and white trademark is identical, or insignificantly different to an opposing trademark.
As the practice in the Wellberg decision shows, the new approach is strict, and the offices are ready to accept “insignificant difference” claims only in exceptional cases. Accordingly, before you file your opposition or cancellation claim based on article 8(1)(a) of the Regulation, you should make sure that there is only a minor difference in colour between your black and white mark and the contested mark.
When the use does not constitute a change of a distinctive character of your black and white trademark?
In order to ensure that an alteration of the colour does not amount to a change of a distinctive character of a black and white trademark you should make sure that you did not alter an identity, or/and individuality of the mark.
According to the Common Practice it means that:
1) both figurative and verbal elements of the altered mark correspond to the mark as registered;
2) the contrast of shades is respected;
3) colour or colour combination is not of a distinctive character itself;
4) colour or colour combination does not have a direct impact on the distinctiveness of a mark.
Accordingly, you should make sure that the colour in general does not play a central role in your trademark, meaning that alteration of the colour would not lead to a change of the perception of your trademark by an average consumer as it has been discussed in American Franchise Marketing Limited and Millennium 2000 decisions.
What Benefits and Weakness can be identified in the Common Practice?
On one hand, numerous benefits resulting from implementation of the Common Practice can be identified. Most importantly, it contributed to a substantive elimination of differences of practices between the European IP Offices and therefore, to a partial removal of the lack of legal certainty and to an improvement of the cost efficiency in the context of the acquisition and trademark management.
On the other hand, despite the extensive geographical application of the Common Practice by the IP Offices its’ scope of application is significantly hindered by means of the following factors:
– neither courts nor tribunals are bound to the letter of the Common Practice, which in practice may lead to contradictory judgments on various instances.
– since over 70% of businesses face an infringement action in the course of its operation, exclusion of infringement claims, may lead to further legal implications.
– limiting the scope of application to figurative trademarks only, and therefore closing the doors for other, increasingly popular types of trademarks.
Furthermore, implemented assessment tests on “insignificant differences” gives a rise to the question what shall be understood as “insignificant difference”. In other words, the question arises as to where to draw a line between a significant and insignificant change. There are multiple studies, where numerous colours and shades of colours are considered to be identical by an average person. Accordingly, a colour perception of an average person may be taken into account in further improvement of the assessment test.
Practical Impact – What should you do:
As the Common Practice entails major changes for some countries and offices, trademark strategies in regard to trademarks in colour, and black and white must be adapted accordingly. Whilst the “black and white covers all approach” is now outdated and therefore it is no longer possible to receive protection of black and white trademark in any colour, trademark owners and practitioners are advised to review their trademark portfolio and where necessary file for subsequent colour applications. Where trademarks remain protected solely in black and white, trademark owners run the risk that their trademarks may be subject to revocation.
Furthermore, those who wish to apply for a new registration within the territory of the EU are advised, if possible, to file for a figurative trademark without a colour specification in addition to an application filed in colour. This is especially the case where colour has been identified by the applicant as a substantial part of their brand equity or considered to be a distinctive element of the mark.
Last, but not least, those who seek protection for a new trademark based on the prior black and white trademark, or those who wish to oppose or invalidate another trademark based on a prior black and white trademark, will have to prove that marks under comparison are identical, or insignificantly different. For that purpose, because little case law exists in regard to these newly established approaches, they can consult numerous studies concerning perception of different colours and shades of colours. Trademark owners are therefore advised to submit substantial supporting evidence in regard to colour significance/insignificance.
