Trade Mark Update
A company’s name, logo and brand are all assets. They are heavily invested in and attract invaluable goodwill and therefore require protection. Failure to properly protect a brand leaves a business entirely open to copycats, competitors and a potential costly legal dispute in fending them off. No matter what size your business is, or however distinctive your product or service may be, without proper legal protection in place you are vulnerable to challenges.
To gain optimum protection and commerciality it is advisable to register your trademark from the outset. Registration grants the owner more conclusive rights which will assist further in the common law action of passing off – an option you may have even if your mark is not registered.
- Is your trade registered?
- Is it registered as a black and white mark?
- Do you use a colour version of the mark more than in the black and white mark?
If your marks are already registered, now may be the time to review your registrations. A new Common Practice announced by the Office of Harmonization in the Internal Market (OHIM) raises the issues as to whether registration of a black and white mark is valid and protected if the mark is consistently used as a colour version. The “black and white covers all” approach has been acceptable Common Practice in many EU national offices, including the UK.
Under the new Common Practice a registered black and white (or greyscale) mark will only be considered identical to a coloured mark where the differences between the marks are so insignificant that they would go unnoticed by the average consumer. An insignificant difference will be one that a reasonably observant consumer will perceive only upon a side by side examination of the marks. Further, use of the mark in colour will only support a black and white mark if the colour does not alter the “distinctive character” of the mark. The coloured mark must meet the following four requirements in order not to alter the mark’s distinctive character:
1. The word or figurative elements are the main distinctive elements
2. The colour is not the main contributor to the overall distinctiveness of the mark
3. The colour does not possess distinctive character in itself
4. The contrast of the shades is respective
However, it seems clear that under the new Common Practice many black and white marks that have been registered for over five years could now be at greater risk of revocation because their use in colour may not be regarded as genuine use of the registered mark.
Trademark owners and applicants should review their current registrations and the actual use of their marks to ensure those marks are fully protected. Use of colour marks that have been registered only in black and white may be insufficient to maintain registration of the mark. For new applications, brand owners should consider applying to register marks in both black and white and in colour, particularly where colour is a distinctive element of the mark.