A colourful issue in European Community trade marks

The Office for the Harmonisation of the Internal Market (OHIM), which is the registrar of European Community trade marks has changed its practice concerning how marks are to be treated if filed in colour or in black and white.

By way of background, it has often been considered the case that, by filing a trade mark in black and white, the scope of the trade mark should encompass all colour variations of the same mark.

Under the new common practice, identity between a trade mark filed in black and white and/or greyscale and the same mark in colour exists only when the marks are the same in all respects, or the differences are so insignificant that they may go unnoticed by the average consumer.

In short, if the sole differentiator between two marks is that one is black and white and/or greyscale, and the other is in colour, it must be assessed whether the addition of colour in and by itself alters the distinctive character of the black and white version of the mark sufficiently to render the colour version a different mark.

The practice has a couple of direct consequences for registration issues:

Priority claims
Unless the differences in colour are deemed to be insignificant, a trade mark filed in black and white will not be considered identical to the same mark in colour for the purposes of assessing priority. Although this seems to be a restriction on current practice, in reality it should represent a more flexible approach; previously the fact that a later mark was filed in colour would mean it could not claim priority from an earlier black and white filing.  Under the new practice, such a priority claim is possible as long as the addition of colour is not deemed to be a significant difference.

Relative grounds for refusal
For the purposes of assessing identity, differences in colour between two marks will be deemed to be noticeable to the average consumer (unless those differences are insignificant). This does not necessarily prevent a finding of confusing similarity between the same two marks.

Genuine use
When assessing whether a mark may constitute genuine use of a particular registration, a change in colour will generally not be deemed to alter the distinctive character of a mark as long as the following requirements are met:

• The marks comprise the same word/figurative elements;
• Those elements are deemed to be the most distinctive elements of the mark;
• The contrast of any 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 of the mark.

The main risk here is that certain marks registered in black and white and/or greyscale for more than five years may now be vulnerable to attack on the grounds of non-use where they have only been used in colour.

The adoption by OHIM of the new common practice opens the door to complex questions regarding the assessment of trade marks in a number of contexts. These are necessarily related to the questions of priority, relative grounds of refusal and genuine use, such as when marks are to be considered identical/confusingly similar for the purposes of infringement.

Given that Australian trade mark applicants are commonly using the International Trade Mark Registration system (Madrid System) to seek protection in Europe, consideration for filing in colour needs to be seriously considered for the International Registration.

Filing coloured trade mark applications for registration in Australia is not problematic.  The Australian position is that colour is not taken to be a limiting factor on the scope of the registration unless it has been expressly claimed to be a limiting factor.

The safest approach then is to file a mark in the exact form in which it is being used, including the same colour scheme.

Simon Ellis

I am starting a new business, what do I need to do about my name?

There are three aspects to consider here – can I use the name, can I protect the name, and what do I have to do to trade under a name?

Picking a Name
There are a lot of good marketing consultants out there, and I do not want to tell you how to brand your products for the intended market and positioning.  However, there are some things to avoid if at all possible.

Do not pick a completely generic, descriptive name, like NORTH SYDNEY HAIRDRESSING  or EMERGENCY PLUMBING REPAIRS or SPEEDY TAKE AWAY.  You just can’t own these names, competitors can copy you, and your business will not build goodwill around the name.  You can use these terms as a descriptor with your brand, but not as the only way people identify you.

The most protectable names are those that mean nothing until you have built a reputation – invented words, or words that are meaningless in the context, e.g. CROCODILE  for accountants, EXXON, APPLE, and FACEBOOK.

Family names (surnames) can be OK if they are uncommon,  but if your name is Jones or Nguyen, this is going to be very difficult to protect.  Geographical names that refer to a specific place are difficult to protect, and you can’t stop another business located there from using the name – this often comes up for wine brands.  But a more general geographical name can be protected, e.g. EAST COAST FASHION.

There are also some words you either cannot use, or which you can’t own as trade marks – and sometimes these are unique to particular countries.  Examples in Australia are ANZAC and GALLIPOLI.  Some words have specific rules about their use, e.g. bank  in relation to financial services, but most of these are pretty self-evident.

I recommend that you come up with at least three or four names you would be prepared to consider, then move to the next step.

Can I use it?
The first question is whether anyone else is already using the name for similar goods or services.  The best first step, before you contact anyone, is to plug the name into a search engine, e.g. Google.  Put the name in alone, and then with a word or two to narrow the field, to (e.g.) architects, or drills, or whatever your business is about.  If this turns up any issues, particularly is there seems to be an active business in similar goods in a similar market, pick another name. You can also check if a website name (URL) is available.

There are two reasons for this. The obvious one is that you do not want to walk into a potentially expensive fight that you do not really need, at the point of launching a new business.  The second reason is that you want to build a business with a unique identity, so that when you are successful, customers come to you, not someone who sounds a bit similar.  If you park too close to another brand, you set yourself up for problems.

Next, check the ASIC online registry as both a company name and a business name.  If there is nothing close, then contact us to do a trade mark search.  We can do an initial near-exact search to narrow the options, leaving in most cases one or two to search properly.  We will advise whether you can use it, and whether it can be registered.

Can I protect it?
If the search is positive, and it is not too descriptive or a word you can’t protect, then we should file a trade mark application.  Once this proceeds to registration , this will provide protection against anyone using the name or something confusingly similar for the same or related goods or services.

You should also buy a URL that will work for your business.

Can I trade now under my new name?
To trade under anything other than your personal name, you need to do one of two things.  Register a company and change its name to the name you want and advertise under the full company name. Otherwise, you need to register the business name with ASIC.  This is now a national system, so you only need one registration. You can easily register the business name yourself, and obtain an ABN at the same time.

Key Points:
1. Do not get too attached to one name at the start.  Try a few options. Try and make it memorable.
2. Do some research yourself.
3. Ask us to do searches and advise.
4. Register the trade mark and  the business name and buy a URL.


Peter Franke