Swedish trade mark court sees its true colours shining through

Black-and-white Kat

When it comes to black-and-white representations of signs, what is the scope of protection afforded to resulting registrations? Katfriend Hans Eriksson (Westerberg & Partners) discusses a recent decision which, at last, might prompt a change in the approach traditional adopted in Sweden with regard to these marks.

Here's what Hans writes:

"In the land of the Northern Lights, you would think that the mystical importance of colour was recognized. But in the trade mark field, Swedish jurisprudence long held a maximalist view of the scope of protection for black and white trade marks. According to this view, a black and white trade mark’s scope of protection covered all possible colours and colour combinations of the same trade mark.

Finally seeing the light, the Patents and Market Court of Appeals recently handed down a decision in a matter regarding an international trade mark application designating Sweden (here, in Swedish), changing - with the stroke of a pen - 60 years of Swedish trade mark jurisprudence while bringing Swedish practice closer to what the practice is in most other EU countries.

The scope of protection for black and white trade marks, including trade marks in greyscale (not this) has long bedevilled European trade mark practitioners.

Historically, two hard interpretations were applied by national trade mark offices. In one corner was the minimalist principle of “what you see is what you get”: a trade mark registered in black and white’s scope of protection was limited to that exact form and colour. In the other corner there was the maximalist principle championed in Sweden: a trade mark registered in black and white’s scope of protection covered all possible colours and colour combinations. Not only was there a longstanding fundamental difference of application between national offices, some offices also reportedly swerved back and forth between the two extremes. There was in a word (or two) legal uncertainty.

If optimistic CJEU watchers in the spring of 2013 hoped these questions would soon be answered in the court’s decision in the epic and sometimes quirky battle between Specsavers International and ASDA (here, here, here, here, and finally here) in C-252/12 Specsavers, they were sorely mistaken. There are straightforward CJEU decisions, and then there are decisions which you could be excused for thinking that you would need a decoder ring to fully digest.

This narrator humbly suggests Specsavers belong in the latter category. And so apparently did national trade mark offices and the EUIPO, because soon thereafter the EUIPO and the European Trade Mark and Design Network made the scope of protection for black and white trade marks the subject of its fourth convergence project. In CP4 Scope of Protection of Black and White Marks, a Common Practice on three important questions was formulated:

• Is a black and white trade mark, from which priority is claimed, identical to the same trade mark in colour?
• Is an earlier black and white trade mark identical to the same trade mark in colour, for the purposes of assessing relative grounds?
• Is the actual use of a colour version of a black and white trade mark (or vice-versa) acceptable for establishing genuine use of the black and white trade mark? 

But the Swedish trade mark office, along with its Norwegian and Danish counterparts and some other wayward travellers, did not implement the Common Practice. In Sweden’s case, the Common Practice’s clear break with the dogmatic maximalist approach was considered impossible to implement in Sweden due to the 1958 (!) preparatory works to the Swedish Trademarks Act. According to the Swedish trade mark database, there is a grand total of 230 trade marks registered in 1958 still in force today in Sweden. But apparently the Mad Men-era musings of seven people appointed in 1949 to formulate the new Swedish Trademarks Act was considered to carry the force capable of keeping Sweden in the trade mark dark ages, even after the Specsavers decision.

The Swedish legal system’s reliance on preparatory works and, to a lesser degree, legal literature is a peculiarity fit for another day’s musing. What is relevant here is that the Swedish Patent and Registration Office, and Swedish courts, continued to apply the maximalist interpretation even in the time after Specsavers and the promulgation of the EUIPO’s Common Practice, with a first tantalising glimpse that there could be a thirst for revisiting this issue by the Patent and Market Court in a decision only months ago (PMÄ 5094-18). 

Kat in black-and-white

Finally that day has now come.

In a case before the Patents and Market Court of Appeals about the validity in Sweden of an international trade mark designating Sweden held by ContextLogic Inc, the court found that the outcome of the case depended entirely on whether the traditional maximalist Swedish view was workable in the light of Specsavers (my translation):

If the (black and white, my addition) international registration should be considered to include colours, including red, the overall impression of the two marks be virtually the same, and the similarity between the marks would be high. The deciding factor in the similarity assessment thus becomes whether a trade mark registration in black and white also includes colours. 

Though formally ContextLogic’s opponent in the case, the Swedish Patent and Registration Office doffed its hat in the proceedings to Specsavers, and an interpretation of that case that might be saying that the times they were a-changing and the traditional jurisprudence should be changed.

The court found that it followed directly from Specsavers, para 37-38 that the registration of a trade mark in black and white cannot be granted a scope of protection that automatically covers all colours or colour combinations. If that was the case, the fact that Specsavers used its black and white trade mark in a green colour version, similar to the green colour used by ASDA, would not have been relevant to the CJEU’s assessment. That conclusion was also supported by later EU case law. The Common Practice was not mentioned, but the court’s decision clearly signalled that the move away from the old maximalist approach to a more nuanced approach was planned and long in the making.

Trade mark holders seeking protection in Sweden will be happy with the decision, and Swedish trade mark practitioners will be relieved to never again have to explain this peculiarity by referring to preparatory works from 1958 to learned colleagues at cocktail receptions. While interesting questions remain about the relationship between black and white and colour trade marks, like how to apply this new interpretation retroactively, it is finally good to see another small piece added to the EU trade mark harmonisation puzzle."