Summary
This post examines the legal implications of black and white trademark registrations in the context of trademark infringement proceedings, focusing on the automobile industry. It outlines the OHIM's 2014 announcement introducing a new common practice for such marks, which considers black and white marks identical to coloured signs only when differences are negligible. The analysis centres on the 2015 German Federal Court decision involving BMW, where the court clarified that black and white registrations do not automatically extend to coloured uses unless the differences are minor. The post highlights that while the BMW emblem case limited protection to identical use, BMW succeeded due to the well-known status of its trademark, allowing for damages even without colour-specific registration. The discussion provides a structured view of evolving trademark protection standards in Europe.
Introduction
This analysis examines the scope of protection afforded to black and white trademark registrations in infringement proceedings, with particular reference to the BMW Emblem case decided by the German Federal Court.
OHIM Common Practice on Black and White Trademarks
On 15 April 2014, the Office for Harmonisation in the Internal Market (OHIM) announced a new common practice for trademarks registered in black and white. The OHIM and participating national offices issued a Common Communication setting out details of the implementation process. Under the new Common Practice, a black and white or greyscale mark is to be considered identical to a coloured sign only where the differences between the signs are so negligible that they would go unnoticed by the average consumer. A difference is characterised as negligible where a reasonably observant consumer would perceive it only upon a side-by-side examination of the marks.
The BMW Emblem Case
Following the introduction of the new Common Practice, the landmark BMW Emblem case was decided by the German Federal Court on 12 March 2015. The plaintiff in the case was BMW, the well-known automobile manufacturer. The defendant sold automotive parts nationally and internationally, and also supplied BMW plaques and logos bearing a design closely resembling those of the plaintiff. The central question was whether the defendant was entitled to manufacture and sell BMW plaques to be fitted to vehicles, given that BMW had not registered its emblem as a colour mark.
The German Federal Court held that the signs were not identical for the purposes of Art. 5(1)(a) of the Trade Mark Directive, as implemented in Germany. The court found that the infringing product deviated significantly in colour from the registered trademark and clarified that the scope of protection of a black and white registration extends only to black and white uses in double identity cases, provided that any deviation in colour is not negligible.
Notwithstanding that finding, the decision was resolved in favour of BMW on the basis of the well-known character of its trademark. The court stated that damages may be claimed in respect of infringement of a well-known trademark that is used in a specific colour or has an enhanced reputation for that colour, even where it has not been registered in those colours.
Analysis
The decision provides clarity on two distinct questions. First, a black and white registration does not extend to coloured variants where the colour difference would be apparent to the average consumer. Second, the well-known status of a trademark can furnish an independent basis for relief even in the absence of colour registration, where the mark has acquired an enhanced reputation in connection with a particular colour. The outcome reflects a balanced approach to the scope of trademark protection in the automobile industry and is consistent with the principles articulated in the OHIM Common Practice of 15 April 2014.
Disclaimer
This article is for general information and does not constitute legal advice. Readers should consult a qualified attorney before acting on any matter discussed here.