It’s not uncommon for a business to register their brand or logo as a Trademark in black and white only (ie without colour limitation). However, very often that mark will largely be used in a particular colour distinctive to that business. Is the mark in that form protected where the colour used is not registered? Nigel Wood, Partner, and Gavin Evans, Associate, in the Commercial Dispute Resolution team look at some recent case law on the point.
Recent rulings from the European Court of Justice (CJEU) suggest, thankfully for many businesses, that it is. The most recent case referred to the CJEU was long running litigation between Specsavers and Asda. In promoting their “in-store” opticians, Asda had used a “double oval” logo very similar to the well known Specsavers logo. The Specsavers logo commonly appears in green and Asda’s well known corporate colour is also green. Specsavers’ trademark was however registered solely in black and white. Could they prevent Asda using a logo in similar form and in a very similar colour, where that colour was in regular use by Asda?
The CJEU confirmed that the similarity of the colour used was part of the circumstances to be taken into account when considering whether there was a likelihood of confusion or the taking of an unfair advantage. When considering whether a trademark registered in black and white has been infringed, it is important to consider how that mark has actually been used in the marketplace.
So, although the Specsavers mark was registered in black and white, the fact that it was normally used in green meant that Asda’s use of a similar logo in green was more likely to cause confusion and hence, more likely to constitute an infringement.
Gavin Evans, Associate in the Commercial Litigation team at The Wilkes Partnership, comments:
“The ruling makes commercial sense in that registered marks often become associated with a particular corporate colour and so use of a similar mark in the same colour is more likely to cause confusion. Having said that, in this case the CJEU noted that where the potential infringer – Asda in this case – is itself commonly associated with the colour used (as Asda was here), that is a factor which may lessen confusion as potential customers are more likely to associate that business with that colour and therefore understand that they are a different business. It is still a “global assessment” that is carried out.”
Nigel Wood notes, “This is exactly the sort of issue that the Commercial Dispute Resolution team at The Wilkes Partnership advises on. We have extensive experience in intellectual property disputes and assist and advise clients on trademark issues.”
For more information or to discuss any of these issues please contact either Nigel Wood (0121 710 5844) or Gavin Evans (0121 710 5950).