United Kingdom: Does it matter if it’s black and white?

There are a number of important factors for rights holders and practitioners to consider when formulating trademark prosecution strategies, including the question of whether a device mark should be filed in black and white or in the precise colours in which it is used. The choice of black and white or colour will directly affect the extent to which the mark can be relied upon against third parties, in addition to how it can be best protected from cancellation for non-use. For example, where a mark is registered in black and white, can use of that mark in colour be relied upon to demonstrate use of the black and white registration?

The issue of trademarks being registered in black and white and then used in colour has attracted much jurisprudence and discussion in recent years. Previously, the common practice in the United Kingdom and the European Union was to file device marks in black and white, so that they could be relied upon to cover all colour variations of that mark. For example, use of a device mark in colour could be relied upon to prove use of a registration in black and white, in order to prove reputation or show genuine use in a cancellation action. However, Specsavers International Healthcare Ltd v Asda Stores Ltd ((Rev 1) [2014] EWCA Civ 1294) reconsidered this practice and generated much discussion across Europe, to the extent that the Office for Harmonisation in the Internal Market (OHIM) and numerous national IP offices in Europe felt it necessary to issue a common communication.

Specsavers v Asda

(Wordless logo)

Specsavers issued trademark infringement and passing-off proceedings against Asda’s advertising campaign to launch its own optician service using the slogans “Be a real spec saver at Asda” and “Spec saving at Asda” in connection with the above circles logo in green, which was similar to Specsavers’ overlapping circles device mark (the “wordless logo” also pictured above). By way of counterclaim, Asda sought to revoke Specsavers’ wordless logo for non-use.

At first instance, the High Court determined that the slogan “Be a real spec saver at Asda” amounted to trademark infringement and took unfair advantage of the distinctive character and reputation of the SPECSAVERS word mark. However, it dismissed Specsavers’ remaining infringement and passing-off claims. The court also revoked Specsavers’ wordless logo for non-use on the basis that Specsavers’ use of the overlapping circle device incorporating the SPECSAVERS word element did not constitute use of the wordless logo because the inclusion of the word element SPECSAVERS altered the logo’s distinctive character.

The Court of Appeal partially allowed Specsavers’ appeal, finding that ASDA’s logo and both slogans infringed Specsavers’ marks, and sought guidance from the European Court of Justice (ECJ) regarding revocation of the wordless logo, including the following questions:

• Where a mark is registered in black and white but the rights holder has used it extensively in a particular colour or combination of colours, with the effect that the mark has become associated in the minds of a significant proportion of the public with that specific colour or combination of colours, is the colour or colours in which the defendant uses the mark relevant in the global assessment of likelihood of confusion or unfair advantage?
• If so, is it also a relevant factor that the defendant itself is associated in the minds of a significant proportion of the public with that particular colour or combination of colours?

The ECJ ruled that colour is significant in the global assessment of likelihood of confusion or unfair advantage. Specifically, where a trademark is registered in black and white, the colour or combination of colours in which it is used can affect how the average consumer of the goods or services at issue will perceive the trademark and will therefore also be relevant in the global assessment of confusion and unfair advantage.

A notable issue in Specsavers was that while Asda’s circles mark was used in green, which was the same colour that Specsavers used for its overlapping circles logo (albeit a different shade of green), the colour green had long been associated in the minds of a significant proportion of the public with Asda.

The ECJ ruled that Specsavers had registered the overlapping circles mark without limitation of colour, as opposed to a claim based on colour; so while it was registered in black and white, it was adjudged to be applicable in all colours, with the Court of Appeal citing Phones 4u Ltd v Phone4u.co.uk Internet Ltd in support.

The decision reinforces the enduring benefits of registering a mark in black and white, as opposed to a specific colour or colour combination. Specifically, by filing in black and white, the rights holder benefits from broader protection, as not only will the black and white registration provide protection against later third-party use in all possible colours, but the rights holder will also be able to claim enhanced distinctiveness of a specific colour in which the registration is actually used – for example, to argue that the likelihood of confusion or association will be increased, without the strict requirement to register the mark in that specific colour.

Common communication

Following the consideration of colour in Specsavers, OHIM and numerous national IP offices in Europe – including the UK IP Office – released a common communication on April 15 2014 relating to the treatment of black and white or greyscale trademarks. Previously, certain offices operated a ‘black and white covers all’ approach, whereby trademarks filed in black and white would be viewed to include protection in respect of the full range of colour combinations. In contrast, other national offices followed a stricter approach, whereby trademarks filed in black and white were treated and relied upon in black and white as filed.

The common communication sought to harmonise the approach of EU trademark offices in the treatment of trademarks in black and white or greyscale, in order to improve transparency, legal certainty and predictability for all concerned.

The common communication detailed a three-part common practice relating to priority, relative grounds and genuine use. Regarding priority and relative grounds, a trademark registered in black and white or greyscale will not be viewed to be identical to the same mark in colour or colour/black and white, respectively, unless the differences in colour are insignificant. An ‘insignificant’ difference in colour is defined as a “difference that a reasonably observant consumer will perceive only upon side by side examination of the marks”.

The final part of the common practice, which covers the issue that arose in Specsavers, addresses the question of whether use in colour of a mark registered in black and white or greyscale, can be relied upon to demonstrate genuine use of the black and white registration (or vice versa).

The common practice states that a change in colour only does not alter the distinctive character of the trademark, provided that the following requirements are met:

• The word/figurative elements coincide and are the main distinctive elements;
• The contrast of shades is respected;
• The 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.

The common communication set out the implementation date of the new practice, being June 2 2014 for OHIM and July 15 2014 for the UK IP Office. Notably, there was some divergence between the various offices as to whether the new common practice applied to pending applications or proceedings, or only applications or proceedings dated after the relevant implementation date. For example, at OHIM, the new practice applied to pending applications and proceedings; but at the UK IP Office, it applied only to new applications and proceedings filed after the implementation date of July 15 2014.

Following the common communication, one can no longer guarantee that use in colour or a combination of colours for a mark registered in black and white will always amount to genuine use of the black and white registration, where the difference in colour can be said to alter the mark’s distinctive character.

Inconsistency between common communication and ECJ case law

Following the common communication, there is a notable inconsistency with the decision in Specsavers insofar as the common communication suggests that a mark that is registered in black and white but used in a ‘distinctive’ colour or combination of colour will not be deemed identical to the mark as registered in black and white. Clearly, this position can be distinguished from Specsavers, which suggested that a registration filed in black and white will provide protection against later third-party use in all possible colours. Of course, the common communication is a practice statement applied at registries; whereas it is the courts that rule on issues of infringement in line with existing jurisprudence, including the ECJ ruling in Specsavers.

In view of these inconsistencies, and in order to minimise risk, rights holders should re-evaluate their trademark portfolios and, if feasible, file their device marks in both black and white and any colour or colour combinations in which they are used – particularly where that colour is likely to be deemed distinctive and associated with the rights holder by the relevant public. Similarly, for new filings, it is also likely to be advisable to file device marks in black and white, in addition to any colour in which they are used – particularly if that colour is likely to be deemed to alter the mark’s distinctive character.

Paolo Cerroni
Associate
[email protected]

An associate in Locke Lord’s London office, Paolo Cerroni’s practice covers a broad range of IP and commercial issues, including the selection, protection, exploitation and enforcement of trademarks and designs. He also advises on issues relating to copyright, anti-counterfeiting and domain names, in addition to a broad range of commercial contracts and agreements. He advises a range of clients, from individuals and start-ups to some of the largest companies worldwide.

William Gómez Thompson
Paralegal
[email protected]

William Gómez Thompson is a paralegal in the intellectual property department at Locke Lord (UK) LLP. He is a graduate of the law and business school at the University of Nottingham and is also a fluent Spanish speaker.