The Office for the Harmonisation of the Internal Market (OHIM) – the body in charge of registering European Community Trade Marks – has issued new guidelines regarding trade marks which are registered in black and white, but used in colour. The guidelines state that colour versions of trade marks will be considered to be “identical” to trade marks registered in black and white “if the differences in colour or in the greyscale are so insignificant that they could go unnoticed by the average consumer”.
The guidelines aim to clarify when a trade mark owner can prevent the use of signs which are identical or similar to the trade mark held by the owner where the public is likely to be confused that the infringing sign is connected to the trade mark owner. OHIM clarifies that, in most cases, the average consumer will not be confused by colour and black and white trade marks and is unlikely to consider them as identical. Instead, only in exceptional circumstances will a difference in colour or shading lead to a likelihood of confusion and infringement of a trade mark. OHIM comments that, “[i]n other words, for the finding of identity the differences in colour of the signs in question must be negligible and hardly noticed by an average consumer.”
The new guidelines also include criteria that changes in colour must fulfil in order not to alter the distinctive character of a registered trade mark.
A copy of the new guidelines can be found on the OHIM website at https://oami.europa.eu/ohimportal/en/news/-/action/view/1230554.
Laura Barrell, a solicitor at Matthew Arnold & Baldwin LLP, comments: “Best practice in respect to obtaining protection of trade marks in black and white or colour has changed. Until recently, it was good practice to register trade marks in black and white on the basis that they would cover colour trade marks. Recent cases and now these guidelines show the dangers of that policy, and the need to register to reflect actual usage. Therefore, if anyone has a black and white registration or a registration in a colour which is no longer used, they should now take advice on whether to obtain a new registration in order to adequately protect their brand.”