The UK Intellectual Property Office (UK-IPO) has issued Tribunal Practice Notice 1/2014 in response to the decision of the Court of Justice of the European Union (CJEU) in Case C-252/12, Specsavers
The UK Intellectual Property Office (UK-IPO) has issued Tribunal Practice Notice 1/2014 in response to the decision of the Court of Justice of the European Union (CJEU) in Case C-252/12, Specsavers International Healthcare Limited and Ors v Asda Stores Limited. In that case the CJEU found that where a mark has been registered in black and white but used extensively in a particular colour, that factor can be taken into account when considering likelihood of confusion. So for instance, the fact that Asda had used its Asda logo mark in the colour green was relevant when assessing confusion with Specsavers' earlier registered black and white trade mark because Specsavers had previously made extensive use of its mark in green.
The Office confirms that the same principle may apply to Registry proceedings and colour may be taken into account when considering likelihood of confusion, detriment and unfair advantage in opposition and cancellation proceedings. However, the Office notes that when comparing trade marks for the purposes of opposition and cancellation proceedings, the Registrar must consider how a later mark could potentially be used and not only how it is currently used. As a consequence, where a mark is registered in colour or colour is established during proceedings as forming part of the distinctive character of a mark registered in black and white, the actual or potential use of a later mark in the same colour will be a relevant factor for the Office to consider when reaching a decision.
Due to the UK-IPO's specific duty to consider all normal and fair future potential usage of a later trade mark, the Office confirms that evidence of use of a later mark in a different colour or colour combination to that contained in a registration for an earlier mark (or that which is actually used by the earlier mark) will not be taken into consideration in registry proceedings. Furthermore, where an earlier mark is registered in black and white but has not been used at all or has not been consistently or extensively used in colour such that the colour can be said to form part of the distinctive character of the earlier mark, then colour should not be taken into account and will be regarded as irrelevant.
In summary, in this practice notice, the UK-IPO acknowledges the circumstances where the subsequent use of a black and white registration in a particular colour can play an important role in registry proceedings. However, the Office also clarifies the situations where colour will be excluded from consideration due to the UK-IPO's requirement to take account not just of actual but also potential uses of later marks.
The Office confirms that the same principle may apply to Registry proceedings and colour may be taken into account when considering likelihood of confusion, detriment and unfair advantage in opposition and cancellation proceedings. However, the Office notes that when comparing trade marks for the purposes of opposition and cancellation proceedings, the Registrar must consider how a later mark could potentially be used and not only how it is currently used. As a consequence, where a mark is registered in colour or colour is established during proceedings as forming part of the distinctive character of a mark registered in black and white, the actual or potential use of a later mark in the same colour will be a relevant factor for the Office to consider when reaching a decision.
Due to the UK-IPO's specific duty to consider all normal and fair future potential usage of a later trade mark, the Office confirms that evidence of use of a later mark in a different colour or colour combination to that contained in a registration for an earlier mark (or that which is actually used by the earlier mark) will not be taken into consideration in registry proceedings. Furthermore, where an earlier mark is registered in black and white but has not been used at all or has not been consistently or extensively used in colour such that the colour can be said to form part of the distinctive character of the earlier mark, then colour should not be taken into account and will be regarded as irrelevant.
In summary, in this practice notice, the UK-IPO acknowledges the circumstances where the subsequent use of a black and white registration in a particular colour can play an important role in registry proceedings. However, the Office also clarifies the situations where colour will be excluded from consideration due to the UK-IPO's requirement to take account not just of actual but also potential uses of later marks.