Colouring In Trademarks

Its not so long since Sally was blogging about the difficulties of deciding whether or not to colour in her trademark applications after the Specsavers decision which rather led us all to believe that gray scale gave you all the benefits of a reputation garnered by use in green. Nevertheless OHIM has now produced a common communication which has set us all aflutter . It turned up just before Easter/Passover on April 15th and has already been commented on by the IPKat. Now its fairly un-contentious on priority and identity but genuine use is the one that we need to address because there is no point in having something on the register that the client cannot defend. The paper does not deal with infringement because the registration offices don't have that problem and arguably Specsavers says all we need to know on that.

As far as the genuine use of a black and white or grayscale mark is concerned - the actual use has to show

• A change only in colour does not alter the distinctive character of the trade mark, as long as the following requirements are met: a) the word/figurative elements coincide and are the main distinctive elements; b) the contrast of shades is respected; c) colour or combination of colours does not possess distinctive character in itself and; d) colour is not one of the main contributors to the overall distinctiveness of the mark.



a CTM as registered

A trade mark as used

C and D are where life gets exciting especially when you consider the accepted practice that a sign is not one sign but many overlaid one upon another so this SPECSAVERS mark was the word on the figurative shape of the overlapping ovals with added green which was the only element not claimed as a trademark in its own right. So are we OK on the use of this black on white community trademark No  001358589 shown ? as a result of use in green. At this point it seems to me that the community was thinking more about a registration in green being used in pink or a shade alteration. C and D seem to be referring to the mark as registered. If we look at it that way there is no problem in confirming genuine use. However if the shape mark had been registered in a different shade we would have a problem as the sign is so simple that colouring it in on the register immediately suggests that the colour has some distinctive character in itself or at least is one of the main contributors. Therefore it seems to me that NOTHING has changed and the idea of registering in black and white is sound especially if colour is incidental.

However if you are going to register in colour or even grayscale then better get your colours right and replace the registrations if they change. Still it has always been good advice to register your trade mark as it is used and then there are no problems in proving genuine use. However trade mark agents find it irresistible to be able to oppose rather more than the identical mark as used on the basis that it is identical to the partial signs they have registered.