Black & white

30 September 2014

Black & WhiteThis article is not about Michael Jackson’s “It’s black, it’s white, it’s tough for you, to  get by, it’s black, it’s white, whoo” song. It is also not about Ann Demeulemeester’s new collection. It is about recent changes in the trademark practice regarding the protection of Black & White marks across the EU. A recent communication (15 April  2014) of the Office for the Harmonization of the Internal Market (‘OHIM’) establishes a common practice (though not equally implemented in all EU countries). A major change is that Black & White trademarks are not considered to also cover all other colour combinations anymore. According to the communication, insignificant  differences (i.e. that would not be perceived by an average consumer) would not  impact the scope of protection of the trademarks as the trademarks would be considered identical. However, a significant change in the colour scale would now require the registration of a new and separate trademark. With this new approach, an examiner can object to any priority claim if there is a significant difference in the appearance of the trademarks. Moreover, the use of a colour version of the Black & White trademark will not be considered as genuine use, unless the colour does not alter its distinctive character. It is not yet clear whether this limitation of the scope of Black & White trademarks will further impact discussions on trademark infringements and likelihood of confusion between similar trademarks. At this point, we are sure of one thing: it is time for the owners of trademarks and for their representatives to review their portfolios…and to buy excellent software and hardware (printer/scanner) to ensure colour conformity. Request a free review of your portfolio today at IP HILLS (and rely on our high definition printer/scanner)!

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