Friday, 21 March 2014

Sally Cooper reaches for her colouring book

NewClient Limited (“NC”) provides a new logo which involves a creative intertwining of the letters “N” and “C” imposed on a fictional flower. I see the flower as a combination of a buttercup (the head) and a rose (the stem). To hide my horticultural ignorance, I comment on the fact that four logos are provided – a first in orange, a second in green, a third in blue and a fourth in red. 

I am told that the new logo has been created in-house by NC’s (employed) design team and the
concept involves use of a different colour in the context of each different business activity. I am also told that NC will operate only in the UK in the near future, and all business is “sporting and cultural”.

The copyright symbol – (c) copyright NewClient Limited 2014 – is attached to materials provided
(none of which have yet been released to the public), and the budget for doing anything further is (very) limited.

I am asked about “Trade Mark Registration” and “DesignRegistration” which NC has read about on the website of the Intellectual Property office at www.ipo.gov.uk.

Particularly, I am asked about registration and colour : I do my best. Key parts of the letter I draft for sending to NC are as follows :
DRAFT BEGINS :
Dear NC
Amongst the issues under discussion are (1) the costs of filing either a Trade Mark Application or a Design Application, and (2) rights arising to the owner of a Trade Mark Registration (under the Trade Marks Act 1994) or to the owner of a Design Registration (under the Registered Designs Act 1949 (as amended). In turn :
1) Application Costs :
 a) Trade Mark Application :
    In order to concentrate on issues of colour, assumptions made are (a) that the Application will be for services in a single Class (viz: Class 41) and (b) that payment of official fees with not be made at time of filing (so no discount of £ 30).    The UK Trade Marks Registry will accept a series of two marks for its basic fee of £ 200.    So NC could apply for its new logo without colour (version in “black-and-white”) and, for that same basic fee of £ 200, add (say) the logo in orange as a second mark.    If NC takes the view that this gives undue importance to the logo in orange, it becomes relevant that the Registry requires an official fee of £ 50 for each additional mark in a series.
    To take account of its view, NC might apply either (a)  for one mark being  the new logo without colour (version in “black-and-white”) (basic fee of £ 200), or (b) for a series of five marks (logos in “black-and-white” / orange / green / blue / red) which attracts an additional official fee of  £ 150
(so £ 350 in total).
b) Design Application :
 The UK Designs Registry will accept two-dimensional designs (“Business logos”) in Class 99 (“Miscellaneous”). It has a basic fee of £ 60 for a first design, and £ 40 for each design thereafter. 
Hence, NC might apply only for its logo without colour (“monochrome”) for the basic fee of £ 60, or it might file for five logos (“monochrome” / orange / green / blue / red) at a total cost in official fees of £220. [ An assumption is made in the case of all fees that publication will not be delayed ].
2) Rights arising  : 
a) Trade Marks Act 1994
“The relevance of colour to a mark registered in black-and-white but used extensively in a particular colour or colours” is the title of a recent Notice issued by the Trade Marks Registry [ TPN 1/2014 ].
The background is a case decided by the Court of Justice of the European Union [ CJEU ] which concerned a mark which had been registered only in black-and-white, but which had, in fact been used extensively in colour  [ Case C-252/12 Specsavers  International Healthcase and Others v AsdaStores Limited ].
The Registry’s Notice brings good news that “use of colour may be taken into account as a relevant factor when considering the likelihood of confusion, detriment or unfair advantage being taken of the registered black-and-white mark” [ paragraph 3 ]
But the Registry also gives a warning : “the CJEU’s judgment does NOT (and NOT  is emphasised by the Registry) mean that colour should be taken into account where the [the owner’s registered trade mark ] has been registered in black-and-white but either (i) has not been used, or (ii) has been used in colour(s) but the extent and consistency of such use is not such that the colour(s) formed part of the distinctive character of [ the owner’s registered trade mark ] .... In these circumstances, colour will be regarded as irrelevant”.
b) Registered Design Rights 1949 (as amended)
The Court of Appeal in the United Kingdom gave its judgement in the case of Magnetic Ltd v PMS International Ltd on 28th February 2014
The Court looked at the record of a three-dimensional article where representations on file did not include any colour and (Lord Justice Kitchin) said “it is striking that the various representations are shown in monochrome, and so it must be concluded that this design is not limited to particular colours”  [ paragraph 42 ] (this time, the emphasis added is mine).
DRAFT ENDS
I have put this draft letter to one side whilst I ponder the question : is it really the case that black-and-white / monochrome logos on the Designs Register now enjoy broader protection than black-and-white / monochrome logos on the Trade Marks Register ?

Answers to the Comment box !

2 comments:

Barbara Cookson said...

Use by Designers of different colour palettes for different divisions is now quite commonplace. It seems to me that if the designer feels it the image is strong enough to be used with different colours, then it is the overall shape that is the branding element so there is no doubt one should go for black and white in those cases. However, sometimes the black and white version just has no real identity at all and the image is made by its colouring. Being a bit of bully I usually make a proposal to the client rather than ask him to choose

Sally Cooper said...

Agree that decision is likely to end up with the adviser. Am aware of an instance a while back when Application was filed at the UK Trade Mark Registry for logo in colour and logo in black-and-white (series-of-two): UK Registry said there were "material differences" so "not a series" : different issue - but wonder why Trade Marks Registry still uses "black and white" when Designs Registry uses
"monochrome" ? Surely we are entitled to some - er - convergence ?