Colour colour colour colour colour Chameleon

Unlike the new Common Practice...

Back in April, this Kat reported on the new European trade mark Common Practice as regards black and white trade marks, and how they are to be compared to colour versions of the same: Red and yellow and pink and green… or just black and white? Important new European Common Practice on black and white trade marks (also considered in this guest post No fudge? General Court deals with warring chocolate cows by Valentina Torelli).

The Common Practice was to be implemented within three months of 15 April, so 15 July. OHIM promised to implement it with effect from 2 June 2014, and sure enough today it has updated the Manual of Trade Marks Practiceaccordingly:

·         On priority claims, see “Part B Examination Section 2 Formalities” at pages 42 and 43, mark-up here.

·         On relative grounds, see “Part C Opposition Section 2 Identity and Likelihood Of Confusion Chapter 3 Comparison Of Signs” at pages 11 and 12 (OHIM has posted a mark-up, but it links to the wrong document). Clean version here.

·         On genuine use, see “Part C Opposition Section 6 Proof of Use” at pages 42 and 43, mark-up here.

Along with certain national trade mark offices including the Benelux and German offices, OHIM will apply the new practice retrospectively to all pending applications and proceedings.

Time to think again about those applications, oppositions, cancellations and other actions you’re involved in – their subject matter may just have changed.

There’s no sign of any change yet to the UK IPO’s own Manual of Trade Marks Practice.

An interesting point not covered in my earlier post but mentioned in one of the comments to it is the effect this new practice has on the recognition of series marks in English trade mark law (which are not permitted at Community trade mark level). According to the UK IPO, a series of marks “means a number of trade marks which resemble each other as to their material particulars and differ only as a matter of non distinctive character which would not affect the identity of the trade mark”. It has to be questionable whether the new practice can be applied to series marks which constituents vary in their colours without concluding that many of them are now invalid.

This kat remains baffled by this new practice and doesn’t understand how OHIM is getting away with what is effectively a change in the law dressed up as a change in practice, and one that effects every single black and white figurative and device mark on the registers of those EU Member States participating, some perhaps fatally.

What’s to be done?! Wails Merpel.