According to the new common practice, for the purposes of use, a change only in colour does not alter the distinctive character of the trade mark (in B&W or greyscale) as long as:

• The word/figurative elements coincide and are the main distinctive elements.
• The contrast of shades is respected.
• Colour or combination of colours does not have distinctive character in itself.
• Colour is not one of the main contributors to the overall distinctiveness of the sign.

This goes in line with the MAD case (judgment of 24/05/2012, T-152/11, paras 41, 45), where the Court considered that use of a mark in a different form is acceptable, as long as the arrangement of the verbal/figurative elements stays the same, the word/figurative elements coincide, are the main distinctive elements and the contrast of shades is respected.

Thus, the proposed new common practice deals with three main questions relevant to priority claims, relative grounds for refusal, and genuine use. As regards relative grounds for refusal, the core statement is: “The differences between a B&W (or greyscale) and a coloured version of the same sign will normally be noticed by the average consumer. Only under exceptional circumstances, namely where these differences are so insignificant that they may go unnoticed by an average consumer, will the signs be considered identical.” In other words, B&W marks are not considered identical with the same mark in colour.

After the proposed new common practice was presented to participants of the October liaison meeting, during the debate, and prior to the vote for approval of the working group’s conclusions, MARQUES raised question as to the rationale of those conclusions. As a matter of fact, it seems that not only some but several of the European national IP offices and also the OHIM have applied the “B&W-covers-all” approach as an established practice and, moreover, that a number of national IP offices are bound not to change this approach due to legal constraints. However, after this intervention, the voting participants representing the IP offices unanimously approved the adoption of the proposed new common practice. According to the procedure, for the new practice to further progress to implementation, it was presented to the Administrative Board for formal endorsement on 19th November 2013.

Not having much time between that Liaison Meeting and the Administrative Board meeting, however, MARQUES made some investigations into the existing practice within and outside Europe. A brief survey was conducted among members of MARQUES’ Trademark Law and Practice Team, which covered several jurisdictions, including Germany, Hungary, Poland, Denmark, Italy, Sweden and the UK within European Union, as well as Norway, Switzerland, Brazil, Canada, Mexico, South Africa and the United States.

The outcome of the survey seemed to support the conclusion that there exists consistent practice in those countries, based on which the scope of protection of a mark registered in B&W covers use in any colour and thus provides broader protection also on relative grounds - in the same way that word marks have been taken to cover use in any font. Namely, it was also discussed and acknowledged that the registration of a word mark covers the same word in any font and musical notes cover a tonal sequence irrespective of its instrumentation (eg by piano or guitar), so why should this be different for figurative marks registered in black-and-white if no colours are specifically claimed?

Furthermore, it was noticed that the Court of Justice of the European Union, in its recent ruling in the “Specsaver” case of 18 July 2013, did not anticipate any issues with the practice of B&W marks covering all colours. Rather the opposite: “At the very least where there is a trade mark which is not registered in a particular colour or characteristic, but in black and white, the colour or combination of colours in which the trade mark is later used affects how the average consumer of the goods at issue perceives that trade mark, and it is, therefore, liable to increase the likelihood of confusion or association between the earlier trade mark and the sign alleged to infringe it.”

It may be assumed that this decision was too recent to be considered in its entirety by the CP4 working group at such a late stage, but it should have had an impact if was considered. Finally, it was also noted that countries such as Denmark, Sweden and Italy as well as Norway cannot implement the new common practice as they are at present legally bound to the opposite   the “B&W-covers-all” approach. MARQUES’ conclusion therefore was that, if a new common practice was to be implemented, it should be exactly the opposite of what has been proposed within CP4.

For these reasons, at the Administrative Board meeting on 19th November, MARQUES, represented by its Chair, made a formal intervention to further justify the reasons for its concerns and to represent the outcome of its internal discussions, as to whether a new common practice was actually needed and should be implemented when it appears that the proposed new principles would irrevocably change an approach that, from a user’s perspective, represents the best possible practice.

While it may be conceded that the new common practice could prove acceptable as far as a priority claim is concerned, MARQUES believes that its implications cannot be overlooked when it comes to questions of genuine use and, likewise, relative grounds for refusal, which - in MARQUES’ view -cannot be separated from infringement issues which are explicitly excluded from the new common practice.

Despite MARQUES having requested that the CP4 working group reconsider its conclusions, the Administrative Board endorsed the project on the basis of its current version and its further progressing to the implementation stage. The process towards implementation may still take some time and there might not actually be implementation of the new common practice by all national IP offices. Thus, there may still be some time to investigate the matter further and to see whether, after all, the new common practice is really in the interest of the users, before it is finally implemented.

A first consultation between OHIM officers, the MARQUES Chair and representatives of the other observer user associations that were present at the meeting of the Administrative Board took place in Alicante on 20th November. It seems that MARQUES’ reasons have been considered and that OHIM is keen to consider the users’ concerns and having a common practice that truly benefits the users. MARQUES will therefore continue to investigate this matter further and raise its voice again in the interest of the users whenever this is deemed appropriate.

Jochen Höhfeld, KSNH, Chair of the Trademark Law and Practice Team