So far, in offices in many countries including Turkey, it was accepted that a trademark registered "as black and white" had covered the use of an identical trademark in all colour combinations.
In some countries, on the other hand, it was accepted that a trademark registered as black and white had covered only the use of black and white version. In this respect, the aim of the project, carried out by the working group of the European Trade Mark and Design Network which had been formed by the officials of OHIM and various national trademark offices, within the scope of "Harmonization Program" for the last three years, was to harmonize different practices of national offices. With the endorsement of the Common Communication (https://oami.europa.eu/ohimportal/en/news/-/action/view/1091009), which was adopted during the project and published by OHIM in April 2014, the broad scope of protection of black and white trademarks is narrowing down.
In early May, the Turkish Patent Institute announced in its website (http://www.tpe.gov.tr/portal/default2.jsp?sayfa=703&haber=905) that changes would be implemented in the scope of protection of black and white trademarks. It is of prime importance that trademark owners are aware of this new practice which somehow narrows down the scope of protection. In the face of the new common communication which will enter into force as of 15th of July 2014, we recommend the trademark owners to review their trademark portfolio and actual uses of their marks and, if necessary, to file applications for the colour versions of the trademarks registered as black and white, the five year validity term of use of which has expired, (particularly, for trademark specimens in which colour is a distinctive element).
For the new applications, filing a trademark application for both black and white and colour versions will provide a broader protection.
The announcement made by OHIM has covered the following 3 main assessment point to be adopted by OHIM and national trademark offices in common practice while assessing whether the colour version of a trademark registered as black and white and/or in greyscale will be considered identical to the mark:
1) In the assessment of a priority claim, trademarks registered as black and white or in greyscale will not be considered identical to the same trademark in colour as long as the differences in colour or contrast in the greyscale are significant. However, if the differences in colour are so insignificant that they will go unnoticed by an average consumer, the trademarks will then be considered identical.
2) In current practice in Turkey and within the framework of Article 14 of the Decree Law No. 556, use of the registered mark in a form differing in elements which do not alter the distinctive character of the trademark will be understood to constitute use. This provision allows a trademark owner to make changes in a sign as long as the distinctive character of the same is not changed. There must be a definitive similarity between the sign being used and the sign as registered. In particular, with regards to the changes in colour, it is assessed whether use of a trademark does alter the distinctive character of the trademark as registered, in other words, whether using a colour version of a trademark registered as black and white or in greyscale (or vice versa) will constitute a change in its registered form. This assessment should be made on a case-by-case basis using the following criteria;
a) Their word/figurative elements coincide and are the most distinctive elements;
b) Contrast in shades is respected;
c) Colour or colour combination does not have distinctive element in itself;
d) Colour is not one of the main contributors to the overall distinctiveness.
3) In an assessment for the identity between an earlier sign registered as black and white or in greyscale and its colour version in terms of relative grounds of refusal, if the difference is insignificant these two signs will be considered identical. Having said that, the signs will only be considered identical if differences in colour of the signs are negligible and hardly noticeable by an average consumer.
The following specimens are considered to have insignificant differences, the difference in colour is not perceived by the consumer.
The following specimens are considered to have significant differences; change in colour is noticeable by the consumer.
On the other hand, announcement of common practice does not provide a common practice in the following matters:
- Deciding whether a trademark filed in black and white will be considered identical to the same trademark filed in colour (and vice versa) in terms of priority and relative grounds for refusal.
- Assessment of similarity between colours.
- Black and white trademarks, which acquired a distinctive character in a certain colour on the basis of its extensive use
- Colour marks per se
PS: The figures used in this article has been taken from the document at http://www.tpe.gov.tr/dosyalar/haber/cp4_common_communication_tr.pdf
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.