This post discusses the scope of protection of black and white trade mark registrations in infringement proceedings.
The OHIM (Office for Harmonization in the Internal Market) made the announcement, on 15 April, 2014, about a new common practice for trademarks registered in black and white. The OHIM and the participating national offices have now issued a Common Communication, together with details of the implementation process.
As per the new Common Practice, a black & white (or grayscale) mark will only be considered identical to a sign in colour when the differences between the signs are so negligible that they would go unnoticed by the average consumer. A negligible difference would be one that a reasonably observant consumer will perceive only upon a side by side examination of the marks.
After the enforcement of the new Common Practice, the landmark BMW Emblem case (BGH) was decided on 12 March, 2015, in the German Federal Court. In the present case, the Plaintiff was the famous automobile company, whereas the Defendant sold auto parts nationwide and internationally as well. It also provided BMW plaques/logos, which had a similar design to that of the plaques of the Plaintiff. The main question to be decided in the case was whether the Defendant was entitled to manufacture and sell BMW plaques to be fitted on the front and rear of the vehicles due to the absence of a registered BMW colour logo. The Court issued a decision on the scope of protection of black and white logos spilling over colour. The Court clarified that it does not consider black and white registrations to be identical to marks using the same sign in colour.
The German Federal Court held the signs to be not identical with respect to the German implementation of Art. 5(1)(a) of the Trade Mark Directive. The decision found that the infringing product deviates significantly in colour from the registered trade mark. Thereby meaning, that the scope of protection of black and white registrations extends only to black and white uses in double identity cases, as long as the deviation in colour is not negligible.
However, the decision went in favour of BMW due to the well-knowness of trade mark. The Court also stated that damages can be claimed in case of infringement of a well-known trade mark which is used in a specific colour or has an enhanced reputation for that color, even though it have not been registered in those colours.
Authored by Ryan Mendonca