1. CP4: Scope of Protection B&W Marks “Harmonise the different interpretations of the scope of protection of trade marks exclusively in black, white and/or shades of grey (whether they cover any/all colours or not).” Convergence Programme

2. Objectives : Develop common practices… Convergence Programme VISION - “ “To establish and communicate clarity, legal certainty, quality and usability for both applicant and office.” ” Which do not require legislative amendments; Which will be put in practice by the Participating National IP Offices, BOIP and OHIM; Which will be made available in all EU languages. 01 02 03

3. Convergence Programme : CP4. Scope of protection B&W marks CP4. Scope of Protection of B&W marks Common Practice Document November 2013: Unanimous endorsement at Administrative Board Meeting.

4. CP4. Stakeholders IMPLEMENTING OFFICES AT, BG, BOIP, CY, CZ, DE, EE, ES, GR, HR, HU, IE, LV, LT, MT, OHIM, PL, PT, RO, SL, SK, TR, UK (23) PARTICIPATING OFFFICES WITH LEGAL CONSTRAINTS NO, SE, DK NON-PARTICIPATING OFFICES IT, FI, FR, USER ASSOCIATIONS (observers) APRAM, FICPI, ICC Convergence Programme : CP4. Scope of protection B&W marks

5. CP4. Project Two extremes: B&W covers all colours What you see is what you get It was not totally clear which offices followed which approach and in which cases. LEGAL UNCERTAINTY 01 02

6. Convergence Programme : CP4. Scope of protection B&W marks CP4. Project Scope a trade mark registered in B&W and/or greyscale is considered identical to the same mark in colour as regards priority claims a trade mark registered in B&W and/or greyscale is considered identical to the same mark in colour as regards relative grounds for refusal use of a mark in colour is considered use of the same trade mark registered in B&W use of a mark in B&W is considered use of the same trade mark registered in colour To converge the practice on whether : 01 02 03 04

7. Convergence Programme : CP4. Scope of protection B&W marks CP4. Out of Scope  Similarities between colours, including whether a trade mark filed in B&W and/or greyscale is similar to the same trade mark in colour with respect to relative grounds for refusal;  Identity when the earlier mark is in colour and the later mark in B&W or greyscale (for identity the common practice focuses exclusively on earlier B&W marks);  Use for the purpose of acquired distinctiveness;  Colour marks per se;  Infringement issues. The following issues are out of the scope of the project : 01 02 03 04 05

8. Convergence Programme : CP4. Scope of protection B&W marks RESULTS OF INITIAL SURVEY (February 2012)

9. Scope of Protection B&W Marks Survey RESULTS OF INITIAL SURVEY (February 2012) Convergence Programme : CP4. Scope of protection B&W marks Priorities Relative Grounds for refusal Genuine use

10. Convergence Programme : CP4. Scope of protection B&W marks CP4. Recap: Steps taken, meetings Kickoff meeting February 2012 Work Package meeting October 2012 Work Package meeting June 2013 – further work on the common practice Liaison Meeting October 2013 separate chapter for offices with legal constraints was added Unanimous endorsement at the Administrative Board Meeting: November 2013 3 deliverables: Principles of the New Common Practice Document, Communication Plan Document, Implementation Strategy Document Working Group Implementation meeting February 2014 – Common Communication Published simultaneously in all websites of all participating offices: 15 April 2014

11. Convergence Programme : CP4. Scope of protection B&W marks CP4. Common Practice Defining identity of signs for priorities and relative grounds For reasons of coherence and legal certainty “identity” must be interpreted in the same way irrespective of the provision in which it appears (Judgement T 378/11 ‘MEDINET’).

12. CP4. Common Practice Priority Claims & Relative Grounds – considering ‘identity’ The Court gives the same definition of identity as in LTJ Diffusion in its Judgement T103/11 ‘JUSTING’, (para. 16), Convergence Programme : CP4. Scope of protection B&W marks 01 02 Judgment C-291/00 ‘LTJ Diffusion’ “a sign is identical with a trade mark only where it reproduces, without any modification or addition, all the elements constituting the trade mark or where, viewed as a whole, it contains differences so insignificant that they may go unnoticed by an average consumer.” (para. 54)

13. CP4. Common Practice Insignificant differences If the differences in colour are so insignificant that they may go unnoticed by the average consumer, the signs will be considered “identical” Convergence Programme : CP4. Scope of protection B&W marks IDENTICAL NOT IDENTICAL

14. CP4. implementing the common practice Convergence Programme Progress Report Insignificant differences Ba earlier mark identity non-identity

15. CP4. implementing the common practice Convergence Programme Progress Report Insignificant differences Earlier mark identity non-identity

16. Convergence Programme : CP4. Scope of protection B&W marks CP4. Common Practice Common practice: Relative grounds If the signs are not identical they could still be similar. Similarity, however, is outside the scope of this project.

17. Convergence Programme : CP4. Scope of protection B&W marks CP4. Common Practice Common practice: Genuine use A change only in colour does not alter the distinctive character of the trade mark, T-152/11 “MAD” - CTM on the left genuinely used by signs on the right unless in exceptional situations…..

18. Convergence Programme : CP4. Scope of protection B&W marks CP4. Common Practice Common practice: Genuine use A change only in colour does not alter the distinctive character of the trade mark, unless in exceptional situations such as those when: The contrast of shades differ significantly Colour or combination of colours has distinctive character in itself Colour is one of the main contributors to the overall distinctiveness of the sign mark

19. CP4. implementing the common practice Convergence Programme Progress Report Common practice: change of approach? Priorities  Previous practice more lenient: 3 (CY, IE, PT)  Previous practice more strict: 10 (BG, EE, ES, GR, OHIM, HU, LT, LV, SK, TR)  No change: 9 (AT, BOIP, CZ, DE, MT, PL,RO, SI, UK) “Identity” for Priorities: 13 Offices are changing their practice

20. CP4. implementing the common practice Convergence Programme Progress Report Common practice: change of approach? Relative grounds  Previous practice more lenient : 2 (CY, GR)  Previous practice more strict: 3 (BG, EE, LT)  No change: 17 (AT, BOIP, CZ, DE, ES, HU, IE, LV, MT, OHIM, PL, PT, RO, SI, SK, TR, UK) ”Identity” for relative grounds: 5 offices are changing their practice

21. CP4. Implementing the common practice Convergence Programme Progress Report Common practice: what has changed? Genuine Use  No change of practice for the National Office  No Office and OHIM will change its existing practice with regard to Genuine use

22. Convergence Programme : CP4. Scope of protection B&W marks CP4. Implementing the common practice Common Communication Document

23. CP4. Implementing the common practice: Common Communication Convergence Programme Progress Report timeframe & scope Implementation date: Publication date (15/04/2014) + max. three months Scope:  Future applications / proceedings (23) +  Pending applications / proceedings (8)

24. Thank You (+ 34) 965 139 100 (switchboard) (+ 34) 965 139 400 (e-business technical incidents) (+ 34) 965 131 344 (main fax) information@oami.europa.eu e-businesshelp@oami.europa.eu twitter/oamitweets youtube/oamitubes www.oami.europa.eu CONTACT US :