Can you defend a trade mark from a non-use action if it has been used in a different or altered form?

It may be possible to avoid cancellation if it can be shown that the mark has been used in a form 'differing in elements which do not alter the distinctive character of the mark in the form in which it was registered'.

James Cornish, chartered trade mark attorney at Page White and Farrer, outlines the rules regarding the use of black and white or colour, and then he explores whether other types of variation would be significant.

Black and white v colour trade marks

When filing, applicants need to decide whether to file for registration in colour or black and white. Often, there is more merit in registering in black and white where:

• marks will be used in various colours as well as in black and white;

• trade mark owners do not want to claim particular rights in one colour;

• applicants are likely to change the colours over the forthcoming years.

• the word and logo elements coincide and are the main distinctive elements; which is likely to be the case if there are word elements, unless they are very descriptive;

• the contrast of shades is respected; which is likely to be the case if the black and white version is a copy of a colour mark;

• the colours do not have distinctive character in themselves, for example the mark applied for is not simply a single colour. Normally, the colour will not have distinctive character in itself as colours are commonly used; and

• the colour must not be one of the main contributors to the overall distinctiveness of the mark, such as if the mark is a descriptive word on a colour background. This issue is likely to be the cause of some uncertainty and will depend on a case-by case basis on the relevance of colour to the mark. Where a mark has a strong word element, where colour is a minor part of the mark, or where a mark has a strong logo or design element, then the colour is not likely to be a main contributor.

By registering in black/white you can then argue that this gives you rights to object to infringing use of similar logos in various colours.

Where trade mark owners want to claim rights in a particular colour, or where colour may be a main contributor to the overall distinctiveness, it is advisable to seek to register marks in that colour, especially if the mark will only be used in a particular colour. For example, where a business has a number of trade marks comprising weak words, all used in the same colour to signify they are part of the same group.

If the provisos do not apply and such a mark is not registered in colour, and only used in black and white there is a risk of a non-use cancellation action and of failing to be able to provide proof of use in opposition actions.

Where owners have current trade marks which they use in colour, but which are only registered in black and white, it may be worth refiling marks in colour. These trade-marks would then not be vulnerable to non-use cancellation challenge for five years.

Use of several signs together

If several trade marks are used side-by-side evidence of this can generally suffice in a non-use action against one mark, if the distinctive character is not altered.

For example, a house mark could be used in combination with a word mark for a product. It is common practice for product names to appear next to house marks and this should be deemed valid use of the product name, following the Cristal T29/04 case. It may be necessary to provide evidence that the house mark is an independent mark.

Minor additions and omissions

Adding non-dominant elements, generic or descriptive words, or other insignificant elements such as punctuation, or indications of the type of enterprise, may well be acceptable. Such minor changes can be disregarded in assessing if there has been proof of use.

If an additional element is non-distinctive, weak and not dominant, and any omitted element is in a secondary position and is non-distinctive, that should not alter the distinctive character. The Intellectual Property Office would assess what is the distinctive character of the mark and whether the changes alter this character.

If a word mark is registered, adding stylisation or a logo element may be acceptable if the overall impression is not changed and the addition is decorative or negligible, following the DRINK FIT T105/13 case. In this case, the registered mark was a single word DRINKFIT, but it had been used as two stylised words.

Stylisation of registered word marks

Use in a different typeface, upper case or colour for the lettering should be acceptable unless the typeface is highly stylised.

Changes to registered marks comprising words and logos together (composite marks)

Changes to logo elements do not normally affect the distinctive character, following the QUANTIEME T147/03 case, especially where the logo element is mainly descriptive.

Mark registered:

Mark used:

Changes to registered logos

Changes to a pure logo mark often alter the distinctive character.

For example, changing a logo of a car from a side view to a front end view.

Action

We recommend a periodic review of all your trade marks to ensure that your IP protection keeps up with any developments in your brand, and that none of your trade marks have become vulnerable to a non-use action.

If you have trade marks registered in black and white, that are only used in colour or in some other varied form, we can advise further on a case-by-case basis, as to whether seeking a new registration in colour is appropriate.

If a logo (only) mark is being used in a different form, the need to register the new form should be assessed.

Please do not hesitate to contact us at trademarks@pagewhite.com, if you would like further assistance in protecting any aspect of your brand protection.

This briefing is for general information purposes only and should not be used as a substitute for legal advice relating to your particular circumstances. Please note that the law may have changed since the day this was first published in August 2017.