The Convergence Programme was established in June 2011 to harmonize the practice of OHIM and the national IP offices of the EU member states. Five projects were launched in the first phase of this programme. This article focuses on the Common Practice arising from the project on the scope of protection of black and white marks.
There has long been a division between the national offices regarding the scope of protection that should be given to marks registered in black and white. Some national offices have applied the "black and white covers all" approach meaning that the registered mark is protected for all colours, and others have taken a more literal approach, so that the registered mark is deemed to be protected only in black and white.
The Participating Offices
A Common Communication on the implementation of the Common Practice established through the project was published on 15 April 2014.
In addition to OHIM, the national offices of Austria, Benelux, Bulgaria, Croatia, Cyprus, Czech Republic, Estonia, Germany, Greece, Hungary, Ireland, Latvia, Lithuania, Malta, Poland, Portugal, Romania, Slovakia, Slovenia, Spain and the UK, in the EU, as well as Turkey, have signed up to the practice and were to implement it within 3 months of its publication.
The practice was implemented by OHIM on 2 June 2014 and by the UK Trade Mark Office on 15 July 2014. The Danish, Norwegian and Swedish national offices showed their support for the project but opted out of implementation due to legal constraints (under their laws black and white marks cover all colours) and the offices of Finland, France and Italy did not participate in the project, therefore they will not be implementing the practice.
The Common Practice
The objective of the project was to harmonize practice with regard to the scope of black and white marks in 3 key areas of trade mark law : Priority, Relative Grounds and Genuine Use.
Under the Paris Convention, an applicant who files a trade mark application in a country which is party to the Paris Convention or to the WTO, or a country with a reciprocity agreement, has a six month window in which to file further trade mark applications in other member countries, for the identical mark and the identical goods/services, and claim the filing date of the first application as a priority date for the subsequent applications vis-a-vis third party applications filed during the same six month window or later.
What is the meaning of 'identity'?
The requirement that the subsequent application which claims priority from the first filing must be for an identical mark seems straightforward enough, and yet the meaning of ìidenticalî is often raised as a topic of debate. The Convergence Programme presented an opportunity to clear up the debate but, rather than establish a Common Practice which sits one side of the fence, the Convergence Programme has brought practitioners to a half-way house between the uncompromising standard of ëidentity means identityí and the relaxed, broad approach of black and white encompasses all colours.
Under the Common Practice, a trade mark filed in colour is not identical to a black and white trade mark from which it claims priority unless the differences in colour are insignificant.
A trade mark in colour or black and white is not identical to a greyscale trade mark from which it claims priority unless the differences in the colours or in the contrast of shades are insignificant.
The Common Practice defines an insignificant difference between two marks as a difference that a reasonably observant consumer will perceive only upon side by side examination of the marks.
Many national offices, as well as OHIM, do not examine trade mark applications on relative grounds for prior rights. However, the comparison of marks comes into play in opposition and invalidation proceedings.
The Common Practice establishes that:
- a trade mark in colour is not identical to an earlier trade mark in black and white unless the differences in colour are insignificant; and
- a trade mark in colour or in black and white is not identical to an earlier trade mark in greyscale unless the differences in the colours or in the contrast of shades are insignificant.
The meaning of insignificant here is not normally noticeable.
Whilst the Common Practice relating to priority applications will be familiar to EU practitioners, the scope of protection of black and white marks under the Common Practice applied to relative grounds is a departure from the practice applied previously by some national offices whereby black and white marks were deemed to cover all colours. The Common Practice will be seen as a narrowing of the scope of protection of black and white marks in this context.
The issue of genuine use arises when a trade mark registration is challenged in opposition or invalidation proceedings or in an application for revocation on the ground of non-use of the mark over a period of five uninterrupted years.
Under the Common Practice relating to genuine use, it is necessary to consider whether a mark used in colour alters the distinctive character of the trade mark registered in black and white/greyscale (or vice-versa), but what must the proprietor of the registered mark consider before putting the mark into use in colour? The Common Practice states that a change only in the colour does not alter the distinctive character of the mark, provided:
- the word/figurative elements are repeated in the mark in use and they are the main distinctive elements;
- the same contrast of shades is used;
- the colour or combination of colours in the mark in use does not possess distinctive character in itself; and
- colour is not one of the main contributors to the overall distinctiveness of the registered mark.
The second requirement above raises the question: How is the contrast of colours assessed when comparing colour marks with black and white marks?
In view of the fourth requirement above, proprietors of weakly distinctive registered marks should be careful not to use colour in such a way that increases the distinctiveness of the registered mark.
It seems that in reality, only very minor differences between the marks to be compared for the purposes of assessing priority claims, relative grounds and genuine use will be acceptable for a finding of identity.
The test is this: the difference must be so insignificant that it would not be perceived by the average consumer.
Implementation of the Common Practice
Whilst it was expected that all participating offices would implement the Common Practice by mid-July 2014, OHIM and some national offices have elected to apply the practice to all trade mark applications and all opposition and invalidation proceedings which were pending on the implementation date. By contrast, the majority of national offices, including the UK Trade Mark Office, are applying the practice to trade mark applications and proceedings filed after the implementation date. At the time of writing, we are not aware of any re-examination by OHIM of applications /oppositions/invalidity actions that were pending at the time of implementation of the Common Practice.
In future, trade mark applicants and proprietors need to be aware that the scope of black and white marks may no longer extend to all colours. Whereas it used to be a good strategy (in some parts of the EU at least, including the UK) to file for figurative marks in black and white to provide the broadest possible protection against later applications filed by other applicants, and to protect against non-use cancellation in the event of use of the mark in different colours over time, applicants now need to be clear at the outset about how they will use their mark, file accordingly and be consistent in their use of the mark.
The new practice also affects the way in which we assess marks in searches as potential bars to use and registration of a new mark. A black and white mark which, previously, would have been regarded as identical to the same mark in colour, will now be regarded as similar. One might say that this lowers the level of risk only slightly, but surely it has a greater impact on marks that would have been considered border-line similar according to the broad scope of black and white marks under the previous practice. The issue of similarity is outside the scope of the new Common Practice, but it is another area that could be affected by it.
The aims of the Convergence Programme were To establish and communicate clarity, legal certainty, quality and usability for both applicant and officeî. However, this Common Practice of ìinsignificant differencesî which arises from a convergence of the practices of OHIM and the national offices is somewhat lacking in clarity. Furthermore, it will be interesting to see how this practice is harmonized with the UK Trade Mark Officeís practice following Specsavers (TPN 1/2014) - as reported in the Spring 2014 edition of Make Your Mark - which acknowledges use in colour, of marks registered in black and white, when comparing marks in opposition proceedings.