Same Same but Different: When is Racing Green not Racing Green?

Photo from byronv2, some rights reserved.

Similarity of trade marks is a tricky issue.  After all, one man’s leaping cat is another man’s sleepeh kitteh and either way, there has been a wealth of guidance, legislation and case law regarding what is and is not similar to, well, just about anything else.

But how similar is too similar, and where do we draw the line on colours and shapes?

If a company has a distinctive mark which features a simple symmetrical geometric shape and another company begins using the same shape, in the same colour, I think we can agree we have a pretty clear-cut case of infringement.

If that second company then slices its mark in half, I think most observers would say their new mark (especially if it remains in the identical colour) is still infringing.

But what then if the infringer bows to pressure from the original company and agrees to change the colour of its new half-logo.  How much of a change is reasonable?

Most brand owners I am sure, would want to see a move from one colour to another; two different colours, not two different shades, not just two Pantone numbers apart.

I certainly had a change from green in mind.  To yellow perhaps, or orange?  There are a lot of colours that aren’t green after all.  But no, green it was.  A lighter green sure.  But marginally.  A different-on-screen-but-print-it-out-and-you-can’t-really-tell-the-difference shade of green.

Photo from prorallypix, some rights reserved.

Now colour is tricky.  I’m sure the IT/design purists will tell you that there is no such thing as identical colours when you’re comparing screenshots to posters, to letterheads to multi-million pound rebranding campaigns.

Beyond that, even in real life, we can say that both cars above are green; but are they the same green?  Are they an identical green?  Are they a similar green? Well yes they are, but are they an identical or a similar green for the purposes of s5(2) of the Trade Mark Act 1994?

So here’s the rub, when is a colour not identical?  Is racing green still racing green when it’s Pantone 553, or Pantone 555?

Among the many “Dangerous Intellectual Property Myths” that Taylor Wessing launched this time last year was the oft-quoted “it’s not infringement if it’s two Pantone shades away from a coloured trade mark or design”.  As TW said themselves:

“two shades is not much of a change. It is unlikely to turn a confusingly similar logo into one which does not cause a likelihood of confusion.”

So that clears that up.  But what about three shades?  Five shades?  Ten shades?  Is there a magical dividing line where “confusingly similar” becomes “not at all alike”?  Perhaps known only to a select few Court of Appeal judges and some in-the-know members of OHIM’s Opposition Division?

Of course there isn’t; it is well-received in the UK that marks must be compared on the basis of their visual, phonetic and conceptual similarity.  Consumers might view marks as a whole, but us dispassionate lawyers must focus on the distinctive and dominant components of the two marks.

So while phonetics might not count for much in this instance, we can still see that two marks which consist of an identical shape (cut in half in one representation) in the same shade of dark green will still be confusingly similar for the purposes of European trade mark law.

But will this convince an opponent to substantially change the colour of their mark?  Will it hell.

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That Busy Tone…

Photo from Walt Stoneburner, some rights reserved.

Yesterday I wrote about “tone of voice”. Today I’ve learnt that whereas I thought “tone of voice” was the marketeer’s equivalent of what lawyers call “look and feel” it actually addresses the way in which a company ‘speaks’ to its clients. This, for the avoidance of doubt is “speaking” not in the sense of an overpaid voice over actor, but in the sense of the “corporate voice” and style of writing.

Now, I was surprised to discover that businesses hire people to come up with this for them (is this my dream job? Paid wordmonging without recourse to legal text?!) it also leads to questions around ownership of the work.

We can all sit here and be reasonably comfortable that the look and feel of a document or website is protected by copyright. But in order for copyright to apply to a company’s “tone of voice” the tone itself must be a “Work”.

It is well established that copyright will only apply to the expression of an idea – and as tone of voice seems to relate to the way in which an expression of an idea is uh expressed, can it be a Work in itself?

Are we looking to establish our rights in the expression of the expression of our ideas?

That doesn’t sound like it’s an assertion we can make, but if we can pay someone to create this mythical tone of voice, surely we can find a way to ensure ownership of it is transferred to us upon completion.

How? Well, watch this space…

I Don’t Like Your Tone, Young Man

Photo from aepoc, some rights reserved.

Now, don’t get me wrong, I have a lot of respect for our friends in marketing.  They do a lot of good work, and in some industries – fashion and tech spring to mind – they convince me to buy lots of pretty things that frankly I don’t need.  Which must benefit some shareholders somewhere.

However, they do speak a foreign language, and working on brand creation matters will often expose you to this.

Today I was asked about “tone of voice”.  This is something I tend to associate with oral communication, in particular, arguments with Ms HotShot where she says “I don’t like your tone of voice”.

Apparently to a ‘marketeer’ however, it means the logo, colour and typeface that a brand uses to convey its values and qualities.  This is something that some brands pay thousands to consultants to develop, but often don’t consider the ownership of.

Now we lawyers like to call this “look and feel” and we like to be able to turn round and tell people that we own the copyright in it, especially if they start trying to imitate it.  But if the marketing bods haven’t considered this from the outset, we often find that, actually, we don’t.  And this can be embarrassing.

So tone of voice / look and feel – whatever you call it, make sure you own it, before you rely on it.