The UK-IPO recently issued a new Tribunal Practice Notice 1/2014 concerning the relevance of colour in the comparison of marks following the CJEU judgement in Specsavers International Healthcare Limited &Ors. vAsda Stores Limited. The notice deserves careful scrutiny by those who own logos and other figurative marks in black and white with effect in the UK.
Reading the Small Print
Specsavers was a CTM infringement case, but in the TPN the UK-IPO acknowledges that the findings appear to be applicable to opposition and cancellation proceedings in the UK-IPO, based on Sections 5(2) and 5(3) of the Trade Marks Act 1994, which require a determination of whether marks are similar.
A fundamental difference between infringement and opposition or cancellation proceedings is that, in the former, the court must consider an alleged infringer’s actual use, whereas in opposition and cancellation proceedings the Registrar must consider the likelihood of confusion in all the circumstances in which the contested mark might be used (O2 Holdings v Hutchison 3G UK). In other words, in opposition and cancellation proceedings, likelihood of confusion must be assessed by considering all normal and fair future and potential uses of the later mark. Consequently, actual use is not relevant to the determination.
Nonetheless, followingSpecsavers the UK-IPO has now confirmed that, where an existing registered logo or figurative mark in black and white has been used extensively in colour, such that the colour forms part of its distinctive character, the potential or actual use of the later sign in the same colour(s) will be considered as a relevant factor in the comparison of marks. This need not mean that the earlier mark owner’s rights are narrower; rather, it may add another string to its bow when a later mark is applied for in colours that evoke how the earlier black and white mark is actually used.
Conversely, where an earlier mark registered in black and white has not been used at all, colour will not form part of the comparison. Where the earlier mark has been used in colour but not to the extent that the colour forms part of the distinctiveness of the mark in use, the Registrar also will not take the colour of any such use into account in comparing the marks.
This raises the question of whether a later logo or figurative mark applied for in one colour may be regarded as confusingly similar to an earlier black and white mark, which has been used extensively in a very different colour or colours to those of the later mark. The TPN appears to indicate that colour would, in such a case, be taken into account and, in these circumstances, it may serve to narrow the scope of the earlier mark holder’s protection.
Consequently, this TPN has the potential either to narrow or to broaden the scope of protection afforded to a mark registered in black and white, depending on whether it has been used extensively in a particular colour or combination of colours, and depending on the colours making up the later mark.
The TPN also confirms that the way in which a later mark holder is actually using its mark may be relevant to the question of unfair advantage or detriment in oppositions under Section 5(3). Hence, the fact that an earlier mark is registered in black and white and a later mark is applied for in black and white, but is actually used in colours which are the same as or similar to those for which the earlier mark is actually used, may tip the balance towards a finding that the use of the later mark results, or would result, in unfair advantage or detriment.
It has long been thought that registering logo and figurative marks in black and white afforded the broadest protection. The new TPN does not essentially change that. However, it does mean that the comparison of marks in proceedings before the UK-IPO will take greater account of how registered marks are actually used.
The new practice does raise the question of whether the registration of a logo or figurative mark in black and white may result in a potential narrowing of rights, where a later mark owner seeks to argue that, because an earlier mark owner has used its mark in a particular colour, which is different to that of the later mark being applied for, there should be no likelihood of confusion. Whether such an argument would find favour remains to be seen.
However, it is at least clear that the new practice may work in an earlier mark owner’s favour by enhancing the likelihood that confusing similarity will be found where a later mark owner adopts colours that are the same as or similar to those used by the earlier mark owner.
The commercial approach underscoring this new practice will be welcomed by many. The inevitable wrinkles in the fabric will no doubt be highlighted, and hopefully smoothed out, in cases to come.