Previously, a logo or design trademark that was registered as community trade marks (CTM) in the European Union (EU) in black and white protected versions of the logo in any color, but this is no longer true. Under a new CTM rule effective July 15, 2014, logo trademarks filed in black and white or grey will not necessarily protect the same mark used predominantly in color. This new approach, one of several changes resulting from the Office for Harmonization in the Internal Market (OHIM) Convergence Programme, should inform both filing and enforcement strategies. This article explains the rule change and provides recommendations to optimize logo and other color trademark protection in the EU.
Why the change?
The goal of the OHIM Convergence Programme is to harmonize the differing practices of national trademark offices (TMOs) in the EU. Previously, in general, a trademark registered in black and white protected use in any color. Moving forward, however, the approach is “what you see is what you get,” so a mark registered in black and white only covers use of the logo in black and white. This new practice is intended to reduce uncertainty for trademark owners since all participating TMOs should apply the same rules. Nevertheless, this quest for harmonization may create more uncertainty, at least in the short term, since implementation and interpretation of this new approach may vary among national courts. Moreover, a few EU countries, namely Sweden, Denmark, Finland, France and Italy, are not currently participating because their national laws conflict with this rule; they will only adopt this rule if and when their laws are amended.
Why is this important?
There are two situations, one defensive and one offensive, in which a black and white logo registration is now of questionable value. First, an action to cancel a logo registration is likely to be successful — even if the logo is used extensively — if the use is only in color. (If the logo is used in black and white, this could avoid cancellation, even if the predominant use of the logo is in color.)
Second, in an infringement action, a trademark owner will find it difficult to prove that use of its logo is senior to, and has priority over, an infringer’s mark, if the logo is registered in black and white but used only in color. Moreover, an infringement action often triggers a cancellation counterclaim which puts the entire registration at risk. Finally, if the logo is registered in black and white, an infringer’s use of the same color as the logo owner’s actual use will have little weight in proving likelihood of confusion.
How is the rule applied?
The new rule states that a trademark in black and white is not identical to the same mark in color, unless the differences in color are insignificant. An “insignificant difference” is defined as a difference that a reasonably observant consumer will perceive only upon side-by-side examination. The examples below, provided by OHIM, illustrate that the “insignificant differences” test is interpreted very narrowly.
The above comparisons show that a slight difference in grey scale or a minimal use of color, e.g., the touch of yellow on the girl’s dress, would be deemed insignificant differences. Therefore, in these cases, a black and white registration would not be cancelled based on these uses.
The examples below illustrate significant differences, highlighting the restrictive scope of the new rule.
To be clear, each of the “Used Marks” illustrates a significant difference, including Number 4, which use minimal color, and Number 7, which has no color at all. Therefore, each of the above “Used Marks” would not be covered by the black and white registration. In other words, the Registered Mark could be cancelled for non-use if only a “Used Mark” were displayed.
Finally, word marks registered in black and white but used in color may fall outside of the rule because the word, rather than the color, would be viewed as the distinctive element of the mark. Nevertheless, if the color has a distinctive character, e.g., a word mark with each letter in a different color, then the word mark may not be protected by a black and white registration.
In light of these changes, brand owners should review their CTM registrations and consider the following recommendations for both logos used in color and word marks for which color is a distinctive element:
- Applications to register any new CTM logo should be filed in color if the logo is used only, or predominantly, in color.
- An existing black and white logo registration should be supplemented with a new filing in color. This is particularly true if the black and white registration is more than five years old, and therefore susceptible to cancellation for non-use.
- If a word mark is integrated into a logo, a separate trademark registration for the word alone should be considered.
- If color is a distinctive element of a word mark, the word mark should be filed in color.
As a practical matter, it could be more cost-effective to file new color applications than to renew black and white registrations. Therefore, once a new color application matures to registration, the black and white registrations could be allowed to lapse. The new color registration has additional benefits: It cannot be challenged for non-use during the first five years, and it provides an opportunity to update, and perhaps expand, the scope of the goods and services covered by the registration.
In short, EU CTM trademarks should be registered in color if they are predominantly used in color, color provides distinctive character to the mark, or there is a significant difference between the color mark and the registered mark in a side-by-side comparison. Filing a new color mark may be a better strategy, and more economical, than renewing a black and white registration. Finally, for optimal protection, we recommend separate registrations for any word mark, even if it is integrated into a logo; the color version of a word mark if color is a distinctive element; and any logo used in color.
The author thanks Lydia Z. Ansari, a 2014 summer associate at Perkins Coie LLP and a law student at the University Washington School of Law, who significantly contributed to this article.