What is in a colour?

As far as trade marks are concerned, quite a lot. Historically, registering a trade mark in black and white in the UK would mean that all other colours would automatically be protected. The decision of the Court of Justice of the European Union ("CJEU") in Specsavers and others v Asda Stores Limited and subsequent practice notes from the Office for Harmonization in the Internal Market ("OHIM") and the UK Intellectual Property Office ("IPO") has challenged this approach and UK trade mark owners should review their trade mark portfolios to ensure that they are suitably protected.

Specsavers launched trade mark infringement proceedings against Asda after Asda's marketing campaign incorporated logos which were seen to mimic Specsavers' registered community trade marks. The High Court initially dismissed the majority of Specsavers' claims; however its decision was overturned in part by the Court of Appeal which found that one of Asda's logos and two of its straplines had taken unfair advantage of distinctive character and repute of Specsavers' community trade marks. The Court of Appeal was unable to reach a decision on whether Specsavers' black and white wordless trade mark (shown above) should be revoked on grounds of non-use, and the question was referred to the CJEU for a preliminary ruling.

Whilst the wordless mark was registered in black and white, it was used predominantly in the colour green by Specsavers. CJEU held that where a mark has been used extensively in a particular colour, such colour must be taken into account when considering the likelihood of confusion or unfair advantage of the black and white mark. So in the above case, the fact that the Asda mark had been used in the colour green was relevant when assessing the likelihood of confusion with Specsavers' earlier registered black and white mark.

In light of the above, a new common practice was introduced by the OHIM in respect of trade marks registered in black and white. The common practice states that trade marks registered in black and white are not identical to the same mark in colour unless the differences in colour are insignificant. A change in colour will, however, not alter the distinctive character of the trade mark if various other requirements are met; for example if the word or figurative elements coincide and are the main distinctive elements.

The IPO has issued Tribunal Practice Note 1/2014 ("TPN") on the same issue and it confirms that if a mark is registered in black and white but colour is established as being a distinctive character of the mark, the IPO will consider potential or actual use of the same colour by a later opposed mark when determining likelihood of confusion. If, however, the mark has not been used in colour or if colour does not form a distinctive character of the mark, colour will not be taken into account when considering likelihood of confusion with the later mark.

The major concern for trade mark owners is that where a mark has been registered in black and white but has only been used in colour for a period of five years or more, should such colour alter the distinctive character of the mark, the mark may be vulnerable to attack on grounds of non-use. Trade mark owners should therefore review their trade mark portfolio and establish whether colour is an important or distinctive characteristic of any of their trade marks. This is clearly a question which is open to interpretation. If it is and such marks are only registered in black and white, trade mark owners should consider filing colour versions of the marks to ensure the widest scope of protection.

This article is for general guidance only. It provides useful information in a concise form. Action should not be taken without obtaining specific legal advice.