September 15, 2014
The true colours of trademarks: Black & White or Coloured?

It is well-known that colours have a significant importance in branding and the perception a consumer will have of a trademark. Colours are commonly used in the most successful brands for improving identification of products with their source, assisting the consumer in making a clear distinction between such products and those of others. Obviously, McDonalds’ logo would not be the same without its red and yellow colours, nor would be the Starbucks logo without its famous green emerald.

But when it comes to trademark registration, the question is which version of the logo should be filed: black & white or coloured? Which one will provide the best protection? There are two different approaches in this regard:

  •      The “black & white covers all” approach, under which a black & white trademark registration will actually cover all possible colours and thus provides the widest protection.
  •       The “what you see is what you get” approach, protecting only the black & white registered version of the trademark and nothing else. 

  • European Community trademarks 

The European Community recently adopted a new regulation about black & white trademarks, which may introduce significant changes in its practice.

The Office for Harmonization in the Internal Market (OHIM) in charge of community trademark registrations issued in this regard on April 15, 2014, a Common Communication on the Common Practice of the Scope of Protection of Black & White Marks, which entered into force progressively in the European countries until July 16, 2014. This Communication was implemented in the OHIM Guidelines for Trademark Registration on June 2, 2014 and is part of the Convergence Programme established in June 2011, which has the great ambition to harmonize the practices among the different national Offices in Europe in order to improve legal predictability for trademarks’ owners. The new practice is applicable in all EU countries except Sweden, Denmark, Norway, Italy, France and Finland.

This Communication provides rules about black & white (or greyscale) trademarks in three areas: priority claims, relative grounds and genuine use.

  •        Priority claims:

Priority claims pursuant to the Paris Convention for the Protection of Intellectual Property (1883) are aimed to extend the date of protection of a trademark filed in the applicant’s country of origin to a subsequent application filed in another jurisdiction, provided such application is filed within 6 months of the original filing.

Pursuant to the recent Communication, priority may now be claimed on a black & white (or greyscale) prior application for the purpose of filing the coloured version of the same mark, provided that the differences in the colours or in the contrast of shades are “insignificant”. Prior to this Communication, the OHIM, as most of the other countries members of the Paris Convention, would not have accepted a priority claim, which is not based on a strictly identical mark. The new Communication will thus enable the OHIM to accept priority claims that would have been previously rejected.

  •             Relative grounds:

The OHIM does not apply any relative grounds during examination of trademark applications, i.e. it may not refuse to register a mark on the basis of a prior similar trademark.

However, once a community trademark application is accepted and published, any interested party may file an opposition or an action for invalidity on the basis of a prior similar trademark. The earlier mark may be not only a community trademark, but also a national trademark from one of the EU member states, an international trademark under the Madrid Protocol, a trademark from the Benelux or even an unregistered well-known trademark.

Pursuant to the new practice, a black & white (or greyscale) mark may be considered similar to a coloured mark for application of the relative grounds in such proceedings, provided that the differences in the colours or in the contrast are “insignificant”. The Communication provides a definition of an “insignificant” difference: this would be a difference that a reasonably observant consumer will perceive only upon side by side examination of both marks. In other words, if the consumer is unable to identify the difference between two marks when observing them separately, but only if he observes the two marks side by side, these marks will be considered sufficiently similar.

  •            Genuine use:

There is no formal condition of use for obtaining registration of a community trademark. However, a community trademark is vulnerable to revocation on the ground of non-use if it was not put to genuine use in the European Union within 5 years following its registration or it was not used thereafter for 5 consecutive years.

Before the new common practice, use of a mark in colours where the mark was registered in black & white only, might be considered as genuine use since a black & white registration was supposed to cover all possible variations in colours.

Pursuant to the famous decision rendered by the Court of Justice of the European Union in July 2013 in the Specsavers case (Specsavers International healthcare v. Asda Stores Ltd - Case C-252/12), extensive use of a mark in a specific colour was even considered genuine use for assessment of likelihood of confusion, notwithstanding the fact that the mark was registered only in black & white.

Specsavers, the largest chain of opticians in the United Kingdom, held several community trademark registrations, among others, for the wordmark SPECSAVERS and for its Black & White logo specsavers. However, it extensively used the mark in green colour specsaversgreen . Such use was considered by the European Court as genuine use for assessment of likelihood of confusion with the green mark of Specsavers’ main competitor, the owner of a chain of supermarkets Asda asada .

Pursuant to the new practice, use of a trademark in a form different from the one registered shall be considered genuine use, as far as it does not alter the distinctive character of the mark. For this purpose, a change in colour will not be considered as altering the distinctive character of a mark, as long as:

  • The word/figurative elements coincide and are the main distinctive elements.
  • The contrast of shades is respected.
  • The colour or combination of colours does not have distinctive character in itself.
  • The colour is not one of the main contributors to the overall distinctiveness of the mark.

The recent Communication seems to be somehow inconsistent with the Specsavers decision, though curiously infringement issues were expressly excluded from the Communication’s scope of application.

  •  Israel

The black & white covers allapproach is prevailing in Israel, where black & white trademark registrations provide in principle the broadest possible protection. Under article 9 of the Trademarks Ordinance, a trademark may be limited to specific colours and where no such limitation is made, the trademark should be considered as being registered for all colours.

After Israel entered the Madrid Protocol system of international trademarks in 2010, the Trademark Office issued in February 2012 a Circular in order to clarify the situation regarding international applications which occasionally include claims for colours as a distinctive feature of the mark.

This Circular stated that when a trademark application (international or not) refers to a mark in colour, the mark will be automatically deemed to be registered with a limitation to the colours appearing in the mark, even in the absence of an explicit claim to the colours and/or any description of the colours; the Registrar further confirmed in this Circular that when the applicant intends to register a mark for all colours, he should apply for registration of his mark in black & white.

However, in case of infringement, it may important to hold a trademark registration reflecting the actual colours in use and not only the black & white version of the mark.

Pursuant to the Israeli practice, when considering whether two marks are confusingly similar and determine if there was passing-off, the three following tests are applied: the test of the appearance and sound, the nature of the goods and consumers, and the circumstances of the case. The Supreme Court ruled in 1997 (Piquanti Food Industries (Israel) Ltd v. Ossem Food Industries Ltd, LCA 1400/97) that even though the colours of the marks are taken into account when ruling about infringement, this should not be the main consideration.

Thus, despite the “black & white covers all” approach clearly adopted in Israeli, protection of coloured trademarks should be considered cautiously, especially when colours constitute an essential feature of the mark.

  •  U.S.A.

In the US, when applying for registration of a black & white or grayscale trademark, a statement that "colour is not claimed as a feature of the mark” may be added. In such case, the trademark registration will cover all colours.

However, when colours constitute an essential feature of the mark, as for the famous Christian Louboutin’s red sole shoe, the mark should be registered in colours while drafting cautiously the description regarding these colours.

The Louboutin’s red sole show was successfully registered as a trademark in the US (Trademark Registration No. 3361597) after it was proven it acquired secondary meaning through extensive use. The registration included the following description: “The mark consists of a lacquered red sole on footwear”.

But when Yves Saint Laurent began to sale shoes with a similar red sole, the US court rules that Louboutin cannot be granted the exclusivity in all red soles shoes, but only when the red sole would contrast with another colour of the upper shoe (Second Circuit Court of Appeals in Louboutin S.A. v. Yves Saint Laurent America Holding, Inc., 11-3303-cv, September 5, 2012). Accordingly, the Second Circuit instructed the US Trademark Office (USPTO) to limit the registration of the red sole mark to “only those situations in which the red lacquered outsole contrasts in colour with the adjoining ‘upper’ of the shoe” and the description included in the trademark registration was accordingly amended.

  •  United Kingdom

Prior to adopting the new EU practice, UK was practising the “black & white covers all” approach.

Following the Specsavers decision, the UK Intellectual Property Office (IPO) issued in January 2014 a Tribunal Practice Note confirming that, for the purposes of opposition and cancellation proceedings “the colour(s) in which the later mark had or could be used will also be considered to be a relevant factor when assessing whether a later mark takes unfair advantage of an earlier of repute.” If, however, the mark is registered in black & white only and is used in colours, while colour does not form a distinctive character of the mark, colour will not be taken into account when considering likelihood of confusion with a later mark.

The UK will now have to apply the new European regulation regarding applications or proceedings filed after July 15, 2014, at least concerning priorities, relative grounds and genuine use. It will however be interesting to see if this practice will be extended to infringement proceedings.

As to relative grounds, it must be noted that since October 2007, the IPO does not apply anymore relative grounds when examining new applications, but only notifies the applicant of possible conflicting prior marks, giving him the opportunity to amend the list of goods and services or to withdraw his application. Then, if the application is accepted and published, the IPO notifies the owners of the prior mark in order to give them the opportunity to oppose the new mark. The new EU practice will thus apply to relative grounds within the frame of opposition proceedings and not during examination of the mark.

  •  France

Since the French Office (INPI) did not participate to the European Convergence Program in relation to the new communication on black & white marks, the French law shall continue to apply to trademarks filed or registered in France.

Article L.711-1 of the French Intellectual Property Code provides a definition of the signs which may be registered as trademarks and the list of examples expressly includes “arrangements, combinations or shades of colours”.

When an applicant wishes the colours to fall within the scope of protection of the trademark registration, he must claim these colours as being part of mark, possibly by specifying the pantone code. The French jurisprudence requires in this regard a clear and precise description of the colour shade claimed (Candia Case – CA Paris – November 25, 1998).

In France too, Christian Louboutin tried to protect his red sole trademark registration by filing an infringement claim against the Zara Company. However, the French Court of Cassation (final appeal court) eventually ruled on May 30, 2012 that neither the form nor the colour of the disputed shoe sole had been appropriately illustrated in a graphical representation that would allow it to be represented visually, and thus upheld the prior judgment which ruled that the trademark was invalid for lack of any distinctive character (Cass / Com May 30, 2012 - Case No 11-20724).

CONCLUSION

The advantage and disadvantages of filing a trademark in black & white or in colours may considerably vary pursuant to the jurisdiction, which does not ease developing a trademark filing strategy for international brands.

Of course, in an ideal world, all possible versions of the mark should be registered. However, it is clear that budget constraints often prevent such registration.

The new EU practice is likely to reduce the protection given to black & white registrations in Europe and will require brand owners to carefully review their trademarks portfolio and possibly file new additional applications in order to protect their coloured marks.

Such decision must be taken in accordance with the actual or intended use of the mark, for example: do colours constitute a unique feature of the mark? Do they have a high degree of distinctiveness? What are the other visual elements of the mark? Are other different colours likely to be used? Where and when will the mark appear in black & white? Etc...

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