ICE trade mark dispute: a chilling reminder to monitor trade mark registers and act against problem trade mark applications!
We take a look at the background and the judgment in the recent ICE trade mark dispute.
Trade mark owners have generally registered trade marks in black and white, or greyscale, on the understanding that this would protect colour versions of their marks. However, there have been some recent changes to trade mark practice which have implications for brand owners of black and white marks, particularly those who have registered their trade marks in black and white but only use them in colour.
The Community Trade Mark Office has been reviewing the scope of protection provided by black and white trade marks across the EU and has announced the release of a statement of common practice for trade marks registered in black and white. The basic approach of this new practice is that a trade mark registered in black and white, and/or greyscale, is to be regarded as identical to a sign in colour only if the marks are identical in all respects or the differences are so insignificant that the average consumer would not notice the difference unless they looked at the marks side by side. In other words, if the marks differ by colour then the marks will only be considered the same if the colour difference is insignificant and would not be noticed by the average consumer unless they viewed the marks alongside each other.
The new common practice affects Community Trade Marks and national EU trade marks and has consequences for the claiming of priority, the relative grounds of refusal in oppositions and proving genuine use of a trade mark.
Until now a Community Trade Mark application claiming priority from an earlier application had to be identical in all respects to the earlier application including colour. Now, following the new common practice approach, a trade mark registered in black and white will be considered identical to a colour mark if the differences in colour are insignificant. This means that in certain cases, where the colour variation between the Community Trade Mark application claiming priority and the earlier application is insignificant, the priority claim will be accepted.
The new common practice means that when assessing whether a mark is identical to another in opposition proceedings any difference in colour between the marks will mean that they are not identical, unless the colour difference is insignificant, negligible and hardly noticeable.
Often a trade mark is registered in black and white but is used in colour. When it is necessary to prove use of a trade mark that is over five years old, EU law allows use of a trade mark which is different from the mark that is registered if the differing elements do not alter the distinctive character of the registered mark. Under the new common practice a colour change will not alter the distinctive character of the trade mark provided:
It is important to note that although the new approach applies to oppositions, the Community Trade Mark Office has specifically stated that the new approach does not apply to infringement. This seems a little anomalous and is likely to raise complex issues when assessing the identity and confusing similarity of marks for infringement.
One of the main consequences of the new practice is that whereas in the past brand owners could register a mark in black and white, or greyscale, and use it in colour, there is now some uncertainty as to whether use of the mark in colour will be effective in satisfying the use requirements. This means that brand owners who only use their marks in colour now might want to consider whether they should seek registration of their mark in colour as well as in black and white, or greyscale, particularly if the colour version changes the distinctive character of the black and white mark.
Similarly, if a brand owner has a colour trade mark in which the colour or a combination of colours is a distinctive feature they should register the trade mark in colour. However, if budgets allow, they may also wish to register their mark in black and white since the new practice is likely to give rise to some uncertainty over issues such as what is an insignificant difference in colour and whether infringing marks are identical or confusingly similar.
Finally, a note of caution, the new practice is being adopted by the Community Trade Mark Office and the national offices but it will ultimately be for the Courts to consider these changes.
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