On 27 February 2019, the Patent and Market Court of Appeal delivered a decision[1] in which the Swedish practice governing how to assess trademarks in black and white was changed. It follows from the decision that trademark protection in Sweden shall be assessed using the “what you see is what you get” approach, which means that a trademark filed in black and white is only protected as such. This represents a major development in Swedish trademark law and will likely also affect the scope of protection for existing trademark registrations.
The “black and white covers all” principle has been applicable in Swedish trademark law for decades. However, as the area of trademark law has been increasingly harmonized within the EU, this has recently been considered to constitute an issue and a discrepancy in relation to EU law and the common practice currently applied in most of the member states. The opposite approach – the “what you see is what you get” approach – which means that the mark is only given protection in the form in which it has been registered, has been adopted by EUIPO and as a common practice under the Convergence Principles of the common practice (CP 4).[2] As the registration offices in some EU member states previously applied the “black and white covers all” approach while others applied the “what you see is what you get” principle, the aim of the programme was to establish a common practice for the registration offices in the member states. As a result of the work with the Convergence Principles, the “what you see is what you get” approach is currently applied by most of the member states, save for Sweden, Denmark and Finland. Sweden did not formally participate in the development of the common practice in 2011 and 2012, although it did submit comments and supported the strive towards a common practice. However, due to legal restraints which emanated from the preparatory works from 1958[3] and which are still considered valid in Sweden,[4] the Swedish Patent and Registration Office (“SCRO”) was, at that juncture, not considered to be in a position to implement the common practice.
Hence, an important question during recent years has been how Swedish courts should assess an EU trademark registered in black and white in case of alleged infringement and likelihood of confusion. Recently, the Swedish Supreme Court had an opportunity to clarify whether the preparatory works from 1958 and previous case law would still prevail or if the Swedish view on black and white trademarks should instead be harmonized with EU law.[5] The case concerned an EU trademark which is registered as a black and white figurative mark but only used in blue and red. The defendant had used a similar figurative mark in blue and green.
Rationally, a Swedish court faced with assessing an infringement of an EU trademark should apply the same principles regarding the scope of protection that EUIPO does at the time of registration, i.e. assume the principle that "what you see is what you get". Otherwise, the similarity assessment of two marks in an infringement dispute would depend on the country in which the action is brought against the infringement of the EU trademark. However, the Swedish Supreme Court did not address the question of what importance could be attributed to the fact that the trademark registration was not limited to any particular colour and the consequences thereof on the facts of that particular case, even though the defendant had made an explicit reference to CP 4 and the principles set out therein. Presumably, the Court did not consider that the issue of colour had any decisive impact on the assessment in that particular case. In addition, the common practice only deals with the registration process, and hence the issues pertaining to trademark infringement are not explicitly dealt with.
The issue therefore remained undecided, whether the statements made in the preparatory works from 1958 and later case law were still good law. The fresh decision from the Patent and Market Court of Appeal was therefore waited for.
The case concerned the validity of an international trademark registration. The SCRO had refused to declare ContextLogic’s trademark (a figurative trademark in the shape of a square with round corners and the letter “g” centralized) valid in Sweden. The trademark was portraited in black and white in the international registration (see the mark to the left below). According to the SCRO, there existed a likelihood of confusion with an older EU trademark (figurative trademark constituted of a square with the letter “g” against red background with white borders, see the mark to the right below). The assessment was affected by the fact that a registration of the applied mark in black and white would cover all colours, including red and white. The international registration and the EU trademark were both registered in class 9 for similar goods and services, e.g. computer software. The Patent and Market Court upheld the decision from the SCRO. When the case was appealed to the Patent and Market Court of Appeal, the SCRO maintained its position regarding likelihood of confusion, but added that perhaps it was time to reconsider that practice based on the recent EU harmonization and CP 4.
The Patent and Market Court of Appeal overturned the lower instance court’s judgment and held that the international registration should be declared valid in Sweden. Having initially established that there was identity/similarity as regard to the services, the Court stated that the decisive factor in the case was whether or not a registration in black and white should be interpreted as including all colours. In the event that the registration would be considered to include all colours, including red and white, the similarity of the marks would, despite some minor differences as regards, e.g. three-dimensional effect, be very similar and give the same overall impression. The Patent and Market Court of Appeal referred to the Specsavers-case from the Court of Justice of the European Union (“CJEU”), in which the CJEU established that it may be of relevance when assessing an alleged infringement whether an EU trademark has been registered in black and white or in colour as this affects the average consumer’s impression of the mark.[6] As a consequence of the CJEU case law, the Patent and Market Court of Appeal declared in light of EU law that a registration of a trademark in black and white cannot automatically give protection for the mark in all colours.
As a consequence, the international registration was not considered as identical colour-wise with the older EU trademark, which is registered in certain colours. Applying this approach, the similarity of the marks was assessed as proportionately low and that there was no risk that the average consumer would confuse the two marks. Hence, there was no obstacle to validate the international registration in Sweden. The judgment cannot be appealed to the Supreme Court and is therefore final and legally binding.
So what conclusions can be drawn from the decision by the Patent and Market Court of Appeal? Since the Swedish Supreme Court very rarely deals with trademark cases, this decision from the Patent and Market Court of Appeal likely will have substantial impact on the practices applied by the SCRO and the Patent and Market courts. At least, it can be concluded that Swedish courts from now on will abolish the “black and white covers all” approach.
This means that when assessing the risk of confusion between two figurative trademarks, of which one is black and white, the new practice will have a great impact on the result, or even be the decisive factor. This applies in particular when the marks are registered in the same class and for similar goods or services. In addition, the decision is likely to affect not only the administrative registration and validation processes at the SCRO but also judicial cases concerning infringements.
The question whether the decision will have retroactive effect, i.e. reduce the scope of protection of existing, registered trademarks in black and white (and greyscale), is not answered by the Court. However, due to the way the Court structured its arguments in the decision, it can be assumed that this new application of the “what you see is what you get” approach shall be understood as originating from the CJEU’s interpretation of the harmonized EU trademark law (and not the CP 4 project as such), which in turn means that it will affect also older registrations. In that case, it will probably result in a situation where fewer previously registered trademarks (in black and white or grayscale) can prevent the registration of a new figurative trademark in a certain colour. Therefore, it is recommended that trademark holders review their current Swedish registrations in black and white, to assess the risk that the scope of protection has been narrowed through this new approach and also to assess whether or not it is necessary to apply for the same marks in certain colours as well.
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[1] Patent and Market Court of Appeal’s decision dated 27 February 2019 in case number PMÖÄ 435-18.
[2] Convergence Principles of the common practice, CP 4. Scope of protection of B&W marks. The common practices are available at www.tmdn.org/network/converging-practices.
[3] Swedish Government Official Report (SOU) 1958:10 p. 107.
[4] See, e.g. the Court of Patent Appeals judgements dated 30 December 2009 in case number 06-330 and 30 December 2011 in case number 09-155.
[5] Swedish Supreme Court’s judgement dated 22 November 2017 (NJA 2017 p. 905). See also the corresponding case from the Court of Justice of the European Union, case C-654/15 (Länsförsäkringar).
[6] CJEU case C-252/12 (Specsavers), items 37 and 38.
