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.

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 !

Is this a Sign?

As I walked the dog the day after the Court of Appeal had dashed the hopes of Cadbury's by rejecting its attempt to register the colour purple, I saw this discarded wrapper by the side of the path. The photo was taken with a camera phone. It deals with blues and purples badly. It is a genuine wrapper and yes, dear reader, I picked it up and attempted to  lodge it in the correct recycling bin.
I doubt that this failure will result in Cadbury or their new brand family in the mother ship, Mondelez abandoning the shade, though maybe this application is doomed if the Supreme Court are not interested in its rescue.
In my office drawer there are several purple wrapped chocolates that I purchased last year, at random from a supermarket, in order to try and explain to a lay client what the trademark registration:

“The colour purple (Pantone 2685C), as shown on the form of
application, applied to the whole visible surface, or being the
predominant colour applied to the whole visible surface, of the
packaging of the goods.”

might mean and whether these products were in or outside the scope of protection.

One is a marginally different shade, another was small and had another illustration that led to a debate about predominately. They kept us happily amused over a glass or two of wine and perhaps one client has decided that colour alone is too brave for their business.

Sir John Mummery felt that both Allan James of the IPO and Judge Birss had erred, was in failing to see the description as part of the sign. In his view: "There is wrapped up in the verbal description of the mark an unknown number of signs". The pun was probably intended but the emphasis is added. The description was also the root of the problem for Sir Timothy Lloyd, and Lord Justice Lewison agreed with both.

At first blush it might seem that the mark might fare better without a description. After all, when I file a word mark, I do not describe how or where I am going to use it. The product is my canvas. I might cover it predominantly with the mark in big letters or choose to use it small. No one has said (up to now) that that was not a sign.

Perhaps the problem with colour is that we avid consumers don't see it as a sign, unless we have been educated by use to recognise it as such. Everyone was agreed that as a matter of fact that colour meant Cadbury's chocolate and was an indication of origin. However if we give them an exclusive right to use a shade or anything similar confectionery wrapping even without any intention to pass off becomes fraught with difficulty.   But if the evidence is accepted, and that finding of fact was not challenged by Nestlé, it seems that Pantone 2685C is off limits. Fact.

The Court also said: "Speculation by this court about the future direction of trade mark law at this stage of development would not help anyone".Such a shame as the Commission has suggested that the Directive should be amended to clarify that a sign does not have to be represented graphically and can be a "colour as such". If we have good passing off/unfair competition rights, it might be better policy for colours as such to stay off the register.

It seems to me that the decision feels right, but that the Supreme Court might need to wonder about the reasoning. The decision was paired with the Mattel/Zynga case before the same panel with a more problematic concept mark : the Scrabble tile, which had been accepted as registrable by the IPO but had not survived the court challenge below. It suffered from its description covering too many signs.

If you need to describe your sign, your problems have begun. Leave drafting descriptions to patent agents is what I say