How is the scope of a trade mark owner's rights affected if it registers a trade mark in black and white, but uses it in one particular colour or colour scheme? The UK Intellectual Property Office (IPO) has issued guidance on the relevance of such use to trade mark opposition proceedings.
Tribunal Practice Notice (TPN) 1/2014 has been issued in response to the decision of the Court of Justice of the European Union in Specsavers v Asda (C-252/12). In that case, the Court found that where a trade mark is not registered in colour, but has been extensively used in a particular colour or colours, then the colours in which a third party uses an allegedly infringing sign are relevant when assessing the likelihood of consumer confusion.
The TPN confirms that where colour is shown to be part of the distinctive character of the earlier mark, even though it is registered in black and white, then the potential use of the later, opposed mark in that same colour or colours is a relevant factor. This is also the case if the opposition claims the later mark will take unfair advantage of the earlier mark's reputation.
By contrast, evidence that the opposed mark has been used in colours different to those for which the earlier mark is known is not relevant. The IPO must consider all potential uses.
The TPN also states that colour is not a consideration when either the earlier black and white registration has not been used in colour, or it is not established that any use in colour forms part of the distinctive character or the mark. In that scenario, the IPO will straightforwardly compare the mark as registered against the mark as applied for.
In light of this, trade mark owners who intend to use colour as a key distinguishing feature of a new logo should consider applying in colour (perhaps in addition to black and white) to ensure that feature is taken into account in any IPO proceedings from the outset, without the need for evidence.