As part of OHIM's attempt to harmonise divergent trade mark practices in EU member states, where that can be done without legislative changes, OHIM has proposed to deal with the scope of protection afforded by black & white (B&W) and greyscale marks.
FICPI was one of three NGOs invited to participate as observers in the CP4 Working Party, but observers were excluded from the meetings between OHIM and representatives of the national offices at which a draft Common Practice was worked out. In due course that draft was unanimously endorsed by the OHIM Administrative Board.
MARQUES, a user group that was present as an observer at meetings where FICPI was not represented, stated in disagreeing with the Common Practice proposal that it “should be exactly the opposite of what has been proposed within CP4”.
OHIM prepared a response which it intended should be co-signed by the “participating user associations” but FICPI declined to join in the response.
Some national offices within the EU take the view that a mark registered in B&W (or greyscale) offers protection not only for that but also for all colours and colour combinations. Other offices apply the practice that marks registered in B&W are protected only in B&W.
The draft new Common Practice proposed by OHIM is that a mark filed in B&W (or greyscale) is considered to be the same as a variant in colour only where the marks are the same in all respects or where any difference is insignificant, i.e. would be noticed by the average consumer only on side-by-side examination. Similarly, for priority claims and relative grounds for refusal, the draft Common Practice provides that a mark registered in B&W is not considered to be the same as the mark in colour unless the differences are insignificant.
MARQUES’ position is that CP4 could have concluded that “B&W covers all” should be the common practice, or alternatively that it is inappropriate to address this issue in the Convergence Programme in view of the differences in national statutes, established case law, the Community Trademark Regulation and the Madrid System.
is that harmonisation in this area is beyond the competence of OHIM and should not be addressed in the Convergence Programme, but rather by considered legislative review in the affected member states, following proper consultation with users of the trade mark system. What has been proposed would devalue existing registrations in B&W.
Questions that need careful consideration include:
- Is the proposal compatible with the Madrid System?
- Would trade mark owners be obliged to file multiple applications in order to obtain full protection, and would they then be faced with higher costs?
- What effect would this change have on SMEs and non-EU trade mark owners?
In view of this, FICPI urges OHIM and the national offices to reopen the discussion and to involve fully all possible affected parties, and notes that in this case there is no urgency that would justify abbreviating the consultation process.