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