Community Communication in Relation to black/white Trademarks

On the basis of the convergence program the Office for Harmonization in the Internal Market (OHIM) is trying to align the official practice of the national trademark offices in Europe. The aim of the program is to provide transparency, legal certainty, and predictability for the benefit of examiners and users.   Background The reason for this project are the different procedures of the offices’ handling practice in relation to black/white trademarks, which has led to confusion. While some of the offices rule that black/white trademarks are protected in every color, others assume, that the protection is only for the black/white trademarks. Results of the Project The project of this Common Communication deals with priority, relative grounds, and genuine use. Priority A trademark in black and white from which priority is claimed is not equal to the same mark in color, unless the differences in color are irrelevant. Relative Grounds An earlier trademark in black and white is not identical to the same mark in color except the differences in color are trivial. An insignificant modification between two marks is a difference that a reasonably observant consumer will perceive only upon side by side examination of the marks. Genuine Use A change only in color does not alter the distinctive character of the trademark, as long as the word/figurative elements coincide and are the main distinctive elements, the contrast of shades is respected; color or combination of color does not possess distinctive character in itself and color is not one of the main contributors to the overall distinctiveness of the mark. Consequences These community principles are a change for offices in some member states. For others, like the German Patent and Trademark Office there are no differences. The Swedish, Danish and Norwegian national officesdecided against implementing this project because of legal constraints. If you want to read more, follow the link: http://www.dpma.de/docs/marke/commonprinciplesenfinal2.pdf