IP practitioners have heard it all when it comes to rules of thumb. The infamous “10 percent rule” immediately springs to mind (ie. if there’s a 10% difference from the original work, then you’re not infringing copyright …).
Another that is trotted out frequently is that a trade mark registered in black & white covers all colours, and that use of the mark in colour will support a registration for the black & white mark in the face of a non-use attack. While those are handy points to start from, with trade mark law that is all that they can ever be. You’ll need to look at the relevant Act for the relevant territory. For example, in Australia, we have section 70(3) of the TMA which provides that “to the extent that a trade mark is registered without limitations as to colour, it is taken to be registered for all colours”, and the New Zealand TMA has section 19(2) in similar terms. Whether these provide a complete answer is another issue altogether.
And so to our friends at OHIM, the body responsible for registering Community Trade Marks. Sometimes they just like to be different. They have recently announced a Common Practice as regards trade marks registered in black & white. Our London colleagues have published a note here that goes into all of the gory detail.
The common practice essentially revolves around the issue of when one mark will be identical to another.
Why does this matter? Well, the issue will manifest itself in a variety of contexts, including:
a. priority claims (eg. a UK or CTM application based on Australian or New Zealand filings);
b. in determining whether two marks are identical in an opposition context;
c. in determining whether genuine use has been made of the registered mark, such that the use supports a black & white (greyscale) registration in the face of a non-use attack.
In the non-use context, use of the mark in colour may be a problem if your mark is registered in black & white (greyscale) and:
- the shading in the registered mark differs from the mark as used; or
- the colour or combination of colours contributes to the distinctive character of the mark.
This is of course in addition to other EU-specific issues around non-use, such as the generally higher level of use required to maintain a registration, and the much narrower exceptions to rely on in case there has been no use (as compared to Australian law, particularly, where there is a broad discretion to allow a registration to remain in place even absent use).
Suffice it to say, if you have your marks registered in the UK and in Europe in black & white, and you are using them in colour, then consideration should be given as to whether you are properly covered. While the legal issue will probably fall to be more definitively considered by the European Court of Justice, you don’t want to be the one arguing before OHIM or the UKIPO that the practice is wrong.
So when do we have to get our affairs in order, I hear you ask? Well, this one is time-sensitive (the answer could appropriately be “yesterday”). OHIM will be implementing the practice as of 2 June (including in respect of pending applications and proceedings before OHIM!), and the UKIPO will be adopting the practice from 15 July in respect of new applications and proceedings filed after that date.