The ITMA London Evening Meeting ‘OHIM & IPO Case Update’ given by Amanda Michaels and Charlotte Scott of Hogarth Chambers took place yesterday and was attended by a number of people from Keltie. Some particular subjects of note that were discussed at the meeting were the Lifestyle Supplies v Ultimate Nutrition Inc case and the Common Communication on the Common Practice of the Scope of Protection of Black & White Marks.

Lifestyle Supplies v Ultimate Nutrition Inc (R1462/2012-G Grand Board of Appeal), which pulls back on OHIM’s sometimes mechanical approach to likelihood of confusion (LoC), i.e. if there is a finding of similarity of marks and goods/services, then there is automatically a LoC.  A key point was the finding that the level of protection conferred by a mark goes hand in hand with the distinctive character i.e. weak marks get weak protection.  Also, the mechanical approach goes against the rationale of the Community Trade Mark Regulations to give too much importance in assessing LoC to non-distinctive elements, taken alone or in combination.  This decision can be found here.

Common Communication on the Common Practice of the Scope of Protection of Black &White (“B&W”) Marks (link).  This looks to formalise the answers to the following questions:

• Is a trade mark in B&W and/or greyscale from which priority is claimed identical to the same mark in colour?
• Is an earlier trade mark in B&W and/or greyscale identical to the same mark in colour when assessing relative grounds?
• Is the use of a colour version of a trade mark registered in B&W/greyscale (or vice-versa) acceptable for the purpose of establishing genuine use?

OHIM will introduce the practice from 2 June 2014.  Adoption of the practice will vary in EU countries.

Ben Britter  30 April 2014