March 2015
Trade marks and brand
identity newsletter
Towards a unified EU trade mark system
Changes to the EU Directive on trade marks (leading to more alignment of
national law) and the CTM Regulation (including changes to the fee structure)
should be finalised later this year. In the meantime, collaboration between
the trade mark offices of the European Union led in 2014 to agreements on
common practice in two significant areas
1. Comparing marks – impact of non-distinctive or weak components
The premise is that all registered marks must be taken
to have a certain, even if low, degree of distinctiveness.
What is the position for trade marks that contain
descriptive or non-distinctive elements?
In opposition and invalidity proceedings before
OHIM and all the EU national offices:
• if marks coincide in an element with a low degree
of distinctiveness this will not normally on its
own lead to likelihood of confusion, though
Significantly, the common practice states that
marks which contain word elements with no (or
low) distinctiveness in English will be considered as
having no (or low) distinctiveness in all languages.
This is encouraging, and may spell an end to a run
of successful oppositions against CTMs based on
marks accepted by national offices but which are
descriptive in English.
According to the guidelines there would be no
likelihood of confusion between:
• there may be likelihood of confusion if the other
components are of a lower or equally low
distinctiveness or have insignificant visual
impact so that the overall impression of the
marks is similar;
• if marks coincide in an element which has
no distinctiveness this does not lead to likelihood
of confusion unless the overall impression of the
marks is highly similar or identical.
Trade marks and brand identity newsletter March 2015
www.haseltinelake.com
It was disappointing then that the General Court
of the CJEU recently upheld a decision of OHIM’s
Board of Appeal which had ruled there was
likelihood of confusion between these marks:
Consistency in comparing marks is an admirable
goal, but not yet a reality!
2. Marks registered in black and white: scope of protection
The key point concerns genuine use for proceedings
before an IP office: when a trade mark is registered
in black and white is use of it in colour (or vice-versa)
acceptable for the purpose of establishing genuine
use (and defending an attack on the grounds of
non-use)? The foundational legislation states that
a mark need not be used in a form identical to that
registered provided the distinctive character of the
mark is preserved.
Under the common practice a change only in colour
does not alter the distinctive character of the mark
so long as the following requirements are met:
• the word/figurative elements coincide and are
the main distinctive elements;
• the contrast of shades is respected;
• colour or combination of colours does not have
distinctive character in itself;
• colour is not one of the main contributors to the
overall distinctiveness of the mark.
The recommended way to seek protection for at
least some marks, going forward, will be to file in
the colours in which they are used: in particular,
registration of a logo in black and white should not
always be assumed to provide generic cover for all
colours and colour combinations.
OHIM, and all trade mark offices in the EU except
in Denmark, Finland, France, Italy, and Sweden, will
work within these guidelines.
Infringement of CTMs and national marks remains
a matter solely for the courts and so is outside the
scope of the common practice. Where a CTM is not
registered in colour but has been extensively used
in a particular colour, the Court of Justice of the
European Union (CJEU) has ruled that so long as the
public associates it with that colour, the colour may
be taken into account in assessing infringement of
the registration.
(Specsavers v. Asda, C-252/12)
Warning!
Check carefully the source of any letters or
invoices requesting payment for trade mark
services such as publication, registration or
entry in business directories. OHIM never
sends invoices or letters to trade mark owners
requesting direct payment. The example on
the right of a request for payment is the most
blatantly misleading of any we have seen
For further information, please contact our
Trade Marks Team:
E: [email protected]
T: +44 (0) 117 910 3200
Trade marks and brand identity newsletter March 2015
www.haseltinelake.com