OHIM's position on colour marks is not black and white

OHIM has recently updated its 'Manual of Trade Marks Practice' so as to apply the Common Practice of the Scope of Protection of Black and White Marks (the 'Common Practice').

The aim of the Common Practice is to ensure common trade mark practice throughout Europe at the registry level, thereby increasing transparency and certainty. In the past, some national offices have applied the approach that if a mark is registered in black and white, it will also protect colour variations (as was OHIM's practice); other offices have adopted a stricter approach, whereby if a mark is registered in black and white, its rights are limited to black and white.

The Common Practice applies to priority claims, relative grounds for refusal (in oppositions) and determining genuine use as follows:

Priority claims: a trade mark registered in black and white / greyscale is not considered identical to the same colour version, for the purposes of claiming priority. However, if the differences in the colours / contrast in the shades are insignificant such that they would go unnoticed by the average consumer, the signs will be considered identical.

Relative grounds for refusal: Again, an earlier trade mark registered in black and white / greyscale is not identical to the later filed colour version of the mark, unless the differences in colour / contrast of shades are insignificant.

Genuine use: In response to the question of whether the use of a colour version of a trade mark registered in black and white / greyscale (or vice-versa) is acceptable for the purposes of establishing genuine use, the Common Practice states that that may be the case where the change only in colour does not alter the distinctive character of a mark, and provided the following requirements are met:

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

OHIM has applied the new practice retrospectively to all pending applications and proceedings.

It is worth noting that the Common Practice is only intended to be implemented at the registry level. The courts will continue to determine infringement cases with reference to relevant case law and the guidance provided by the decision of the Court of Justice of the European (CJEU) in Specsavers International Healthcare Limited and Ors v Asda Stores Limited (C-252/12), which in particular, recognised that, in certain circumstances, use in colour of a mark registered in black and white was a relevant consideration in assessing likelihood of confusion.