New EU practice regarding black-and-white marks: impact on establishment of genuine use

Trademark owners are concerned about the Common Communication by the trademark offices of the EU states and the European Community Trademark Office published in spring 2014 regarding the “scope of protection for marks registered in black-and-white or greyscale”.

In Switzerland, for genuine use to be established a registered mark can also be used in a form that does not deviate materially from the registered form. This also applies for figurative marks that are used in colours that differ from those that were registered. A registered black-and-white logo is also used sufficiently to establish genuine use if the mark is used in colour, provided that the original mark is still recognisable and the colours of the mark do not give a different overall expression.

This is similar to the former practice of EU trademark law. In the Specsavers case last year (judgement of 18 July 2013, case C-252/12), the European Court of Justice (ECJ) decided that the use of the following logo in green also establishes genuine use for the same mark registered in black-and-white:”