UK: Do Your Trade Marks Need To Change Colour?

Change in UK and EU trade mark practice highlights the importance of reviewing your black & white logo marks

As part of a convergence programme to harmonise certain trade mark practices across the EU¹, some important changes are coming into effect in mid-2014 concerning the effect and scope of logo trade marks, specifically those registered in black and white ('B&W').

This exercise was deemed to be necessary because of the fact that some EU countries, including the UK, treat logo marks registered in B&W as protecting that logo for all colour variations whilst others adopted a 'what you see is what you get' approach, limiting the scope of a B&W mark to that representation only. The latter approach may of course have a negative impact if a mark is primarily used in a particular colour by potentially leaving the mark unable to show genuine use as registered. The 'what you see is what you get' approach would also affect the scope of the mark when compared against a third party brand in colour.

The changes will therefore have important ramifications on:

The particular areas of trade mark law that have been reviewed as part of this exercise are set out in the following questions:

1. Priority claims²: Is a trade mark in B&W from which priority is claimed identical to the same mark in colour?
2. Earlier marks/confusion as to preventing registration: Is an earlier mark in B&W identical to the same trade mark in colour of a third party?
3. Genuine use: Is the use of a colour version of a trade mark registered in B&W (or vice versa) acceptable for the purpose of proving the mark has been put to genuine use?

Interestingly, there are a number of areas that have not been addressed by the communication including the issue of relying on use to show that a trade mark has become distinctive over time and how use in B&W would affect that. Strangely, the issue of infringement as to whether a third party use in colour would infringe a registration in B&W or vice versa was not considered even though the same confusion considerations apply to prevent registration of a third party mark (as in question 2).

Furthermore, although the aim is for harmonisation across the EU on this issue, certain Member States have opted out³ whilst others cannot adopt the required changes due to their statute laws on the scope of B&W marks.⁴ However, as both the UK and Community Trade Mark Offices are to adopt the practice, it is important for clients to be aware of the changes.

In this regard, the answer to question 1 is 'no' because the concept of identity is applied in the strictest sense for a priority claim to be valid. The marks must truly be identical in every respect. In practice, this is unlikely to have an effect on clients and their existing portfolios as priority would usually be claimed from the same mark as it appears in the first filed application.

With regard to the answer to the second question, the report states that an 'average consumer' will usually notice differences between a B&W and colour version of the same mark unless the differences are so insignificant that they may go unnoticed and would only be noticed on a side by side comparison of the marks.

Therefore, the answer is effectively 'no', an earlier mark in B&W is not identical to the mark in colour unless the addition of any colour is insignificant and would not be noticed.

The result of this for clients is that any case they wish to take based on a B&W registration against the registration by a third party of a colour version of a logo mark would not be based on double identity-namely an identical mark for identical goods where there is no requirement to prove a likelihood of confusion. Hence, the case would be that little bit harder to prove because it would be based on the marks being only similar and hence having to prove the existence of a likelihood of confusion.

One would hope that this would not be problematic to show in most cases but in order to ensure the best possible robust position and case, Avidity IP strongly recommends any clients who have logos registered only in B&W now look to also register those logos in the main colour scheme in which they are usually used. If this is done, any action against third parties applying for a colour mark will then be more easily and more cost efficiently decided in the client's favour. It also provides more specific protection to reflect how the mark is actually used should proof of use ever be required.

In that regard, in terms of the answer to the third question on genuine use, the current position in law is that use of a mark in a form that does not alter the overall distinctive character of the mark is acceptable to support evidence of use⁵. Consequently, the changes to come in to effect now say:

"For the purpose of genuine use, a change in colour does NOT alter the distinctive character of the trade mark as long as:

In most cases, it should therefore not be too problematic to show evidence of use of a mark in a colour to successfully support and maintain a registration in B&W.

However, there may be more borderline cases where colour actually adds to or makes up the main distinctive part of the mark or where colour may really change the shading of a logo. In such instances, Avidity IP strongly recommends clients seek separate registered protection for a logo in the colour scheme in which it is actually used in the marketplace. If there is any doubt or uncertainty as to whether use in colour would support a B&W registration, professional advice should be sought from Avidity IP.

It is recommended that client's now review their trade mark portfolio for any UK and Community Trade Marks for logos in B&W to ascertain actions that may now need to be taken to strengthen their future position concerning use of the mark and being able to attack third parties.

Footnotes

^{1 Common Communication on the Common Practice of Scope of Protection of Black and White Marks, 15 April 2014, seen here}

^{2 Priority refers to when a trade mark application is filed in a different territory within 6 months of the first filed application for that mark and the later filing is able to be backdated to the filing date of the first filed application}

^{3 Italy, France and Finland}

^{4 Sweden, Denmark and Norway although the latter of these is not an EU Member State}

^{5 Article 10(1)(a) of Directive 2008/95 and Section 46(2) of the Trade Marks Act 1994}

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.