The Court of Justice of the European Union (herein after “CJEU”) has issued its judgment in Case C-252/12, Specsavers International Healthcare Limited and Others v Asda Stores Limited and the UKIPO has issued Tribunal Practice Notice 1/2014.

The Court of Appeal (England & Wales) (Civil Division) had stayed proceedings and referred five questions to the CJEU for a preliminary ruling as they felt that Article 9(1)(b) and (c) of Regulation No 207/2009 needed further clarification where a mark registered in black and white had been used extensively in colour. In particular, questions 4 and 5 asked:

“4. Where a Community trade mark is not registered in colour, but the proprietor has used it extensively in a particular colour or combination of colours such that it has become associated in the mind of a significant portion of the public (in a part but not the whole of the [European Union]) with that colour or combination of colours, is the colour or colours with which the defendant uses the sign complained of relevant in the global assessment of [either the] likelihood of confusion under Article 9(1)(b) [of Regulation No 207/2009], or unfair advantage under Article 9(1)(c) of [that regulation]? If so, how?”

“5. If so, is it relevant as part of the global assessment that the defendant itself is associated in the mind of a significant portion of the public with the colour or particular combination of colours which it is using for the sign complained of?”

In answer to these questions, the judgment states that:

4 – “Article 9(1)(b) and (c) of Regulation No 207/2009 must be interpreted as meaning that where a Community trade mark is not registered in colour, but the proprietor has used it extensively in a particular colour or combination of colours with the result that it has become associated in the mind of a significant portion of the public with that colour or combination of colours, the colour or colours which a third party uses in order to represent a sign alleged to infringe that trade mark are relevant in the global assessment of the likelihood of confusion or unfair advantage under that provision [Paragraph 41]”.

5 – “Article 9(1)(b) and (c) of Regulation No 207/2009 must be interpreted as meaning that the fact that the third party making use of a sign which allegedly infringes the registered trade mark is itself associated, in the mind of a significant portion of the public, with the colour or particular combination of colours which it uses for the representation of that sign is relevant to the global assessment of the likelihood of confusion and unfair advantage for the purposes of that provision”[Paragraph 50]”.

From the above, we understand that where a mark registered in black and white is used extensively in a particular colour, or colours, the use of such colour, or colours, may be taken into account when assessing the likelihood of confusion, detriment or unfair advantage being taken of the registered black and white mark. This is also true in infringement proceedings and therefore it is likely that these findings are applicable to opposition and cancellation proceedings also.

One would also presume that where a mark registered in black and white has not been put to use extensively in a particular colour, or colours, this would not be taken into account and the ‘normal’ assessment of likelihood of confusion, detriment or unfair advantage being taken of the registered black and white mark would be taken.

However, what is not clear is whether use of a mark registered in black and white in a particular colour, or colours, such that it has become recognisable to the public and therefore arguably may be taken into account when considering the global assessment of a mark in view of this judgment, would be assessed when the later mark has been used in a different colour scheme. If so, there is a risk that the marks would be considered distinctive due to the difference in colours. Previously, it was thought that a registered mark in black and white would provide protection against confusingly similar marks regardless of the colour of the later mark, but that may no longer be the case. It will be interesting to see if such an argument is raised in a case and what judgment will be made.

Charlotte Blakey 21 January 2014