Convergence Programme

CP 4. Scope of Protection B&W Marks

Alicante October 2012

To convergence the Practices of the scope of protection of trade marks exclusively in black, white and/or shades of grey. (Do they cover any/all colours or not?)

Survey CP4 Scope of protection of black and‐white trade marks.

PROJECT OBJECTIVE

Survey CP4 Scope of protection of black and‐white trade marks.

QUESTION 1In his Judgement C 291/00 ‐ ‘LTJ Diffusion’ (paras 50-51), the European Court of Justice has given a strict and restrictive interpretation to the concept of “identity”:

“The criterion of identity of the sign and the trade mark must be interpreted strictly. (…) There is therefore identity between the sign and the trade mark where the former reproduces, without any modification or addition,

all the elements constituting the latter”.

Consider the following situation: A trade mark is registered in black and white and/or greyscale. The same sign is represented in colour.According to your practice, would this sign in colour fit the definition of identity given by the Court for

the purpose of:

a) Claiming priority?

Would this sign in colour fit the definition of identity given by the Court for the purpose of:

b) Relative grounds for refusal on the basis of article 4(1)(a) of the Directive 2008/95/EC?

Survey CP4 Scope of protection of black and‐white trade marks.

QUESTION 1

Would this sign in colour fit the definition of identity given by the Court for the purpose of:

c) Relative grounds for refusal on the basis of article 4(1)(b) of the Directive 2008/95/EC?

Survey CP4 Scope of protection of black and‐white trade marks.

QUESTION 1

Is identity in a strict and restrictive interpretation a requirement to claim priority?

Survey CP4 Scope of protection of black and‐white trade marks.

QUESTION 2

In accordance with art. 10.2(a) of the Directive 2008/95/EC, use of a mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered constitutes genuine use.

a)A trade mark is registered in black and white and/or greyscale. The same sign is used in colour.

Would this change in colour alter the distinctive character of the registered sign?

Survey CP4 Scope of protection of black and‐white trade marks.

QUESTION 3

b) A trade mark is registered in colour. The same sign is used in black and white and/or greyscale.

Would this change in colour alter the distinctive character of the registered sign?

Survey CP4 Scope of protection of black and‐white trade marks.

QUESTION 3

Do you agree with the following statement?

“For the purposes of use, a change only in colour does not alter the distinctive character of a trade mark”.

Survey CP4 Scope of protection of black and‐white trade marks.

QUESTION 4

For the purpose of signs registered in black and white but used in colour, do you think your current practice will be modified by the MAD Judgement ?

Survey CP4 Scope of protection of black and‐white trade marks.

QUESTION 5

LEGAL GROUNDS: PRIORITY AND RELATIVE GROUNDS FOR REFUSAL

PRIORITY•Article 4(A)(2) of the Paris Convention: “Any filing that is equivalent to a regular national filing under the domestic legislation (…) shall be recognized as giving rise to the right of priority”.•Article 29 CTMR: “A person who has duly filed an application for a trade mark in or in respect of any State party to the Paris Convention (…) shall enjoy, for the purpose of filing a Community trade mark application for the same trade mark (…) a right of priority during a period of six months from the date of filing of the first application.”

ART. 4 (1)(a) / 4(1)(b) of the Directive 2008/95/EC•“A trade mark shall not be registered or, if registered, shall be liable to be declared invalid:•If it is identical with an earlier trade mark, and the goods or services for which the trade mark is applied for or is registered are identical with the goods or services for which the earlier trade mark is protected.•If because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association with the earlier trade mark.”

Survey CP4 Scope of protection of black and‐white trade marks.

For the purposes of USE, a change only in colour does not alter the distinctive character of the trade mark provided that:

•The composition of the trade mark stays the same (arrangement of the verbal/figurative elements)

•The word/figurative elements coincide and are the main distinctive elements.

•Colours did not alter significantly the contrast of shades of the registered sign.

•Colour or combination of colours does not have distinctive character in itself.

•The distinctive character of the sign is not determined by the choice of colour.

Survey CP4 Scope of protection of black and‐white trade marks.