OHIM, National PTOs Adopt Common Communication on B&W Trademarks

The OHIM and participating national offices have recently implemented the Common Communication, outlining the new common practice within the EU concerning the protection of black and white (B&W) trademarks.

The Swedish, Danish and Norwegian PTOs opted out of implementation of the common practice due to legal constraints, while Italy, France and Finland have not participated in the project.

To arrive at the common practice, the participating offices analyzed three important questions concerning B&W trademarks – priority, conflict with an earlier trademark and genuine use.

• Is a trademark in B&W and/or greyscale from which priority is claimed identical to the same mark in color?

• Is an earlier trademark in B&W and/or greyscale identical to the same mark in color when assessing relative grounds?

• Is the use of a color version of a trademark registered in B&W/greyscale (or vice-versa) acceptable for the purpose of establishing genuine use?

Under the new common practice, the scope of protection afforded to B&W marks will not extend to all color versions of the marks, i.e. B&W marks will only provide protection to color marks if the difference in color is so insignificant that the average customer would not perceive it. Therefore, the scope of protection should now be considered on a case-to-case basis taking into account whether the color difference alters the distinctive character of a trademark.

Croatia

The implementation date for Croatia was July 1.

In Croatia, the common practice applies to all applications and proceedings (including oppositions, invalidations or revocations) filed after the implementation date. Also, the common practice applies retrospectively to all applications and proceedings (including oppositions, invalidations or revocations) that were pending on the implementation date.

Consequently and to ensure full protection, the owners of B&W trademarks are advised to review their trademark portfolios and consider whether to file new trademark applications for the color versions of B&W marks. This is especially relevant if the marks are used in color and the color is the distinctive feature of the marks.

The brand owners will also have to initially consider whether to file new trademark applications for the marks in color, as well as B&W marks, as filing both versions will ensure the strongest protection.

Slovenia

The implementation date for Slovenia was July 1. The common practice will apply only to applications filed after the implementation date. Furthermore, the Slovenian PTO does not assess the genuine use.

Romania

The implementation date for Romania was July 16. The Romanian PTO’s practice is the same as the Croatian PTO’s practice.

Bulgaria

The implementation date for Bulgaria was July 1. The Romanian PTO’s practice is the same as the Croatian PTO’s practice.

Hungary

The implementation date for Hungary was July 1.

The common practice will be implemented in Hungary in proceedings that started on and after July 1. It does not apply to pending cases.

With respect to priority, this is a favorable change, because according to the earlier practice, complete identity was necessary for the acknowledgement of priority, but as a result of the new practice, substantial identity will be sufficient, i.e. insignificant differences are allowed.

With respect to the conflict with an earlier trademark and the proof of use, the PTO goes by the old practice and applies the already established principles.

Prepared by: Jadranka Barisic (Croatia); Roxana Sarghi (Romania); Maja Znidaric (Slovenia); Elena Marinova (Bulgaria); Csilla Balogh (Hungary)

For more information, please contact mail@petosevic.com.

Source: OHIM; local PTOs