Today (16th July, 2014) sees the entry into force of the Common Practice of the Scope of Protection of Black and White Marks which was published on 15 April 2014.
The Common Practise is divided into three parts:
1. Priority
In the past while this Office allowed some leniency in relation to the issue of priority when filing an application, now as a result of the Common Practise, the marks must be identical.
Identical is defined as meaning "differences so insignificant that they may go unnoticed by an average consumer".
The new practise means that if an applicant files an application and claims priority from an earlier mark that is in colour, then the mark in the Irish application must also be in the same colour. Or if an applicant claims priority from an earlier mark that is in black & white, then the mark in the application must also be in black & white in order for the claim to priority to be allowed.
The only exception is where the priority document is printed in B&W and colour is claimed, then the representation of the mark in the subsequent application must be in the colours as claimed in the priority document.
In essence this is the only change in the practise of the Patents Office.
2. Relative Grounds
In respect of relative grounds, there is little, if any tangible change in practice. While we will still examine on relative grounds the only difference may be:
• a slight decrease in objections under Section 10.1 (identical mark and identical goods/services) and
• an increase in objections being raised under Section 10.2 (identical mark and similar goods/services to those for which the earlier trade mark is protected, or similar mark, with identical or similar goods/services and there exists a likelihood of confusion on the part of the public, which includes the likelihood of association of the later trade mark with the earlier trade mark.)
If the situation arose where an applicant filed an application to register a colour version of a third party’s registered black & white mark, the office would still raise an objection under 10.2. of the Act on the grounds that the mark was similar to the registered mark, and that there would be a likelihood of confusion on the part of the public, which included the likelihood of association of the later mark with the earlier registered trade mark.
(No change from current Office practice)
3. Genuine Use
In general, for the purposes of use, a change only in colour does not alter the distinctive character of the trade mark as long as:
• The word/figurative elements coincide and are the main distinctive elements.
• The contrast of shades is respected.
• Colour or combination of colours does not have distinctive character in itself.
• Colour is not one of the main contributors to the overall distinctiveness of the sign.
(No change from current Office practice)
Please note, the treatment of marks in greyscale, are now treated in the same manner as black & white marks.
Case Law:
The following are examples of cases that were considered during discussions in relation to these issues:
• The recent SPECSAVERS case (Case C 252/12 in relation to infringement of a registered mark), is an example where a mark was registered in black & white but was then extensively used in colour (green). The Court of Justice ruled that the differences between the form in which that trade mark is used and that in which it was registered do not change the distinctive character of that trade mark as registered.
• In the “MAD” CASE (T-152/11) the General Court, ruled that:
When a colour is not claimed in the application, the use of different colour combinations must be admitted as long as the letters contrast against the background. (Paragraph 41)
The fact that the letter D is represented in red colour does not alter the distinctive character of the mark, since both the arrangement of the letters, and the contrast against the background of the earlier mark, are maintained. (Paragraph 42)
The Court took the view that use in forms that respect the arrangement of the letters and the contrast against the background, does not alter the distinctive character of the mark as it was registered.
• In the LTJ Diffusion case (C-291/00) in relation to infringement, the Court ruled that Article5(1)(a) of First Council Directive(EEC) 89-104 (to approximate the laws of the member states relating to trade marks) had to be interpreted as meaning that a sign was identical with a trade mark where it reproduced, without any modification or addition, all the elements constituting the trade mark or where, viewed as a whole, it contained differences so insignificant that they might go unnoticed by an average consumer.
See previous article