The aspect of genuine use in order to sustain a registered word/picture trademark stays in focus of the European Court of Justice (ECJ) (see recently: Article of November 27, 2012). Further, in one of its recent decisions (Judgmentwhite within the context of trademark collision (i.e. in case of danger of confusion and protection based on reputation).
Sufficient right-sustaining use of a trademark
One of the question at issue before ECJ was whether the use of a word/picture trademark is sufficient for sustaining trademark rights pursuant to Art. 15 para. 1 CTMR, if the registered trademark only comprises the graphic component of the word/picture trademark – i. e. a pure picture mark without word component. Here, the trademark proprietor only used the word-picture-combination as a graphic representation of the mark in trade.
According to the ECJ the use of the pure picture mark together with a word component overlapping the picture may nevertheless constitute a genuine use of the pure picture mark, as far as the trademark in the form in which it has been registered, i. e. without a part of it being hidden by the superimposed word, still refers to the products of the owner of the trademark (Judgment of July 18, 2013 – C-252/12, para. 24 – Specsavers/Adsa). Therefore, the decision could be different if the picture component is used only in parts or if it is hidden or superimposed by additional elements.
In order to strengthen the existing trademark protection it may, therefore, be advantageous not only to register a word/picture combination but also to register the used pure picture mark, as far as the graphic representation in the word/picture combination is not overlapped by the word component.
Trademark collision in case of coloured usage of a black-and-white trademark
Considering the trademark collision, the ECJ furthermore assessed the influence of the colour design of a trademark which is registered only in black-and-white, however, which is used in a coloured form. According to the ECJ the use in coloured form may be relevant for the likelihood of confusion or for collision due to reputation, respectively, provided that the coloured use is perceived as a reference for the relevant public to the trademark proprietor. For example, if the colour design of the contested sign resembles the colouring of the registered black-and-white sign, this may be considered when assessing the trademark collision (cf. Judgment of July 18, 2013 – C-252/12, para. 48 – Specsavers/Adsa).
These guidelines by the ECJ constitute an exception from the principle that only the registered form of the (earlier) trademark has to be considered for a trademark collision. For instance, the German Federal Court of Justice (BGH) assumes that the assessment of the overall impression of trademarks has to be based on the registered form of the signs (for opposition proceedings: BGH, Decision of April, 3 2008 – I ZB 61/07, para. 18 – SIERRA ANTIGUO; for infringement proceedings: BGH, Judgement of November 5, 2008 – I ZR 39/08, para. 36 – Stofffähnchen). The distinctive character acquired by use in any different colour may only be attributed to a trademark registered in black-and-white, if the coloured design does not change the characteristic of the mark (cf. BGH, Decision of May 11, 2006 – I ZB 28/04, para. 34 – Malteserkreuz).
For the proprietor of a black-and-white trademark using the trademark essentially in a coloured representation these new ECJ principles may be cut both ways. On the one hand, the colouring may increase the danger of collision at least with respect to a similar coloured usage of the sign. On the other hand, in case of a coloured use of the trademark registered in black-and-white a potential infringer may try to elude the trademark collision by using (also) a different colour design as the proprietor to avoid a collision.