Colour trade marks can be 'identical' to those registered in black and white, says OHIM

Out-Law News | 05 Jun 2014 | 12:53 pm | 2 min. read

Colour versions of trade marks will be considered to be 'identical' to black and white registered marks "if the differences in colour or in the greyscale are so insignificant that they could go unnoticed by the average consumer", according to new guidelines issued by an EU agency.

The Office for the Harmonisation of the Internal Market (OHIM), which is the registrar of Community trade marks, has clarified the treatment of trade marks registered in black and white but used in colour in new guidelines it has issued.

Under the UK's Trade Marks Act and the EU's Community Trade Mark Regulation, trade mark owners generally have the right to restrict the use of signs that are identical or similar to the ones they hold rights to for identical or similar goods or services that the protected mark covers where the public is likely to be confused and link ownership of a rival sign to the trade mark holder.

Relevant to the assessment of likely confusion is the perceived or actual views of the 'average consumer' on the matter.

The new guidelines issued by the OHIM explain that in most cases, the average consumer would not consider colour and black and white trade marks to be identical.

"It is only under exceptional circumstances that the signs will be considered identical, namely where the differences in the colours or in the contrast of shades are so insignificant that a reasonably observant consumer will perceive them only upon side by side examination of the marks," the OHIM said in announcing the new guidelines. "In other words, for the finding of identity the differences in colour of the signs in question must be negligible and hardly noticeable by an average consumer."

The OHIM's new guidelines also explain how trade mark owners that change the colours they use for their black and white-registered marks may, in some cases, be said to alter the distinctive character of their mark.

Trade mark law states that marks which are "devoid of any distinctive character" should not be registered and can be revoked.

"The amended guidelines now refer to the agreed criteria that changes in colour must fulfil in order not to alter the distinctive character of the trade mark as registered (the word/figurative elements coincide and are the most distinctive, the contrast of shades is respected, the colour or combination of colours does not have distinctive character in itself, and colour is not one of the main contributors to the overall distinctiveness)," the OHIM said.

In a judgment issued last year in a case in which Pinsent Masons, the law firm behind Out-Law.com, acted which involved Asda and Specsavers, the Court of Justice of the EU provided some clarity on the importance of trade mark being used in certain colours to determining whether that mark, where it has been registered in black and white or greyscale form, has been infringed by a rival's sign.

The CJEU said that the colour that a rival business uses in a sign is relevant to determining whether that use is likely to confuse the public and take unfair advantage of a trade mark owners' mark where the trade mark in question, although not registered in colour, has been used extensively in a certain colour or colours to the extent that it has "become associated in the mind of a significant portion of the public with that colour or combination of colours".

The CJEU said, though, that where those rival businesses are themselves associated with the colours they use to represent their allegedly infringing sign, that factor is to be taken into account when determining 'likelihood of confusion' and 'unfair advantage'.

Intellectual property law expert Iain Connor of Pinsent Masons said: "This guidance is helpful but as ever does little to simplify trade mark law. What trade mark owners and competitors want to know is that the trade mark registry, which lists all registered trade marks, explains to the public what rights have been granted to the trade mark owner. This guidance shows that the trade mark registry is no longer a definitive record of the trade mark owners’ rights as other factors have to be considered to determine whether a competitor’s sign is too close to a mark already on the register.”