13 April 2017
What is black and white and red all over?* Joking aside, the serious question being asked by brandowners is whether black and white trade marks are protected for use in every colour, not just red.
Historically, a trade mark registered in black and white or greyscale (B&W marks), was treated by the English courts, the UKIPO and the EUIPO as providing protection for all colour variations. Recent developments have brought this approach into question. This affects priority, proof of use, comparisons of marks and infringement.
Case law from the High Court and Court of Appeal  of England & Wales indicates that a mark registered in black and white is protected in respect of all colours. However, at around the same time as those court decisions were handed down, the UKIPO and the EUIPO adopted a Common Practice  (the Practice). The Practice sets out guidance for examiners, practitioners and trade mark owners as to how B&W marks will be interpreted by the registries when considering priority, similarity of marks and proof of use. The Practice appears to diverge from the approach of the English courts.
What does the Practice say?
- A mark in black and white is not identical to the same mark in colour unless the differences in colour are insignificant (emphasis added)
- A mark in greyscale is not identical to the same mark in colour, or in black and white, unless the differences in the colours or in the contrast of shades are insignificant (emphasis added)
- an insignificant difference between two marks is a difference that a reasonably observant consumer will perceive only upon a side by side examination of the marks
Do we have any examples?
The Practice offers this example of an insignificant difference:
…and of a significant difference:
Ultimately, the courts have the final say on how the law is to be interpreted and so the traditional approach is more likely to be favoured in that forum. However, it is important to understand that a different stance may be taken by the registries.
Only time will tell which approach will prevail or indeed if they will converge. One possible interpretation which would align the principles is that a mark registered in black and white may be deemed protected in respect of all colours where the differences in the colours are insignificant.
The interpretation of series marks is currently subject to an appeal to the UK’s Supreme Court. Will the English courts take the opportunity to clarify the position and align the law with the Common Practice? Watch this space.
Read our note on series marks here.
1. Specsavers International Healthcare Ltd and others v Asda Stores Ltd  EWCA Civ 24 and  EWHC 2035 (Ch)
2. Common Communication on the Common Practice of the Scope of Protection of Black & White Marks
*A penguin rolling down a hill.
Image used under Creative Commons licence. Click here.