Register in black and white, use in colour – what does this mean for your UK trade marks?

The UK Intellectual Property Office (UKIPO) has issued its first Tribunal Practice Note of 2014 relating to the relevance of colour to a mark registered in black and white but used extensively in a particular colour or colours. This comes on the back of the judgment of the Court of Justice of the European Union (“CJEU”) in Case C-252/12, Specsavers International Healthcare Limited and Others v Asda Stores Limited.

In this case, the CJEU ruled that where a Community registration is not registered in colour, but the proprietor has used the mark extensively in a particular colour or combination of colours with the result that it has become associated in the mind of a significant portion of the public with that colour or combination of colours, the colour or colours which a third party uses in order to represent a sign alleged to infringe that trade mark are relevant in the global assessment of the likelihood of confusion or unfair advantage in infringement proceedings.

The UKIPO’s Practice Note has confirmed that by analogy, this may be applicable to opposition and cancellation proceedings before the UKIPO, but has made the distinction that in such proceedings, unlike in infringement proceedings, the Registrar is required to consider the likelihood of confusion “in all the circumstances in which the mark applied for might be used if it were to be registered”. As such, if the earlier mark is registered in colour, or colour forms part of the distinctive character of the mark (even if the earlier mark is registered in black and white), the potential or actual use of the later mark in the same colour will be considered to be a relevant factor.

The Practice Note goes on to state that as the Registrar must consider all normal and future potential uses of the later mark, evidence of use of the later mark in a different colour is not a relevant factor when considering the liklihood of confusion.

It is also the Registrar’s view that colour will be regarded as irrelevant in circumstances where the earlier mark has been registered in black and white and either has not been used, or if used, has not been used in colour to any extent or with any consistency such that it formed part of the distinctive character of the earlier mark at the relevant date in the proceedings. In these circumstances the Registrar will compare the marks as they appear on the register.

The writer is not aware of the Community Trade Mark Office (OHIM) having made any similar amendments to its manual of trade mark practice.

If you wish to discuss the impact of this Practice Note on the scope of protection afforded to your own trade mark registrations please do not hesitate to contact your trade mark attorney.