Historically, national trademark offices in Europe had been divided about the scope of protection given to black and white trademarks. Several offices (including the UK Intellectual Property Office) had treated these marks as providing protection in all colours, while others had applied a ‘what you see is what you get’ approach, meaning that trademarks filed in black and white had only been protected as such. However, a new Common Practice released by the European Trademark and Design Network introduced a harmonised approach across Europe, which brand owners need to consider when formulating their logo protection strategies.
The new Common Practice
Under the rule, which came into force on 2 June 2014, a trademark in black and white or greyscale is not identical to the same mark in colour, unless the differences in colour are insignificant. An insignificant difference is defined as a ‘difference that a reasonably observant consumer will perceive only upon side by side examination of the marks’.
As the Inside Counsel blog explains, this change has two main implications for brands. Firstly, an action by a competitor to cancel a black and white logo registration is now likely to be successful, if the logo is only used in colour. Secondly, a trademark owner will find it difficult to prove that use of its logo has priority over an infringer’s mark, if the logo is registered in black and white but used only in colour.
What should trademark owners do?
Use of colour marks registered in black and white may now be insufficient to maintain the registration of the mark – in other words, brand owners can lose their trademark rights.
The UK and EU intellectual property attorneys at Forresters LLP advise businesses to apply to register any new logos in the colour(s) in which they are likely to be predominantly used and update any pre-existing black and white applications to reflect actual use. Furthermore, experts at Turner Parkinson recommend that brand owners are highly specific when filing a colour mark by referring to an internationally recognised colour identification system (eg. Pantone).