Filing trademarks in black and white – choices and consequences

Published onJanuary 2015

Upon filing of a trademark, many questions may arise. The issue of colour/B&W trademarks is particularly important for applicants especially considering it is quite easy to make variations in the sign, enabling it to be better adapted to the marketing and promotion requirements of the goods or services.

This issue was dealt with under the Convergence Programme aiming to harmonise the way OHIM and a number of European trademark offices operate in order to “establish and communicate clarity, legal certainty, quality and usability for both applicant and office” (1). And a common practice concerning the scope of protection of B&W marks, which is a go-between the opposite approaches of “B&W-covers-all” and “what you see is what you get”, has taken effect since July 16th, 2014.

It converges the practice regarding a trademark filed in B&W and determines whether the same mark in colour is considered identical with respect to priority claims and relative grounds for refusal, and also whether use of the same mark in colour is considered use of the trade mark registered in B&W (and vice versa).

Priority: A trade mark in B&W from which priority is claimed is not identical to the same mark in colour unless the differences in colour are insignificant (2).

Relative grounds (raised during opposition proceedings or invalidity action): An earlier trade mark in B&W is not identical to the same mark in colour unless the differences in colour are insignificant (3).

Genuine use: As regards specifically alterations in colour, the main question that interests the trademark owners is whether use of the mark in colour, while being registered in black and white (and vice versa) constitutes an alteration of the registered form or a genuine use of the trademark.

A change only in colour does not alter the distinctive character of the trade mark, as long as the following requirements are met:

a) The word/figurative elements coincide and are the main distinctive elements;

b) The contrast of shades is respected;

c) Colour or combination of colours does not possess distinctive character in itself and;

d) Colour is not one of the main contributors to the overall distinctiveness of the mark.

These criteria were defined by the General Court of the European Union in a decision concerning the trademark MAD (4).

One of the first tips to follow for trademark registration remains to file the sign as it will be mainly used, as regards colors.

In the event your trademark should have varied since the registration, contact us so that its protection remains appropriate and effective.

© INSCRIPTA

(1) The Swedish, Danish and Norwegian national offices acknowledging and supporting the work carried out by the working group, opt out of implementation of the common practice due to legal constraints that imply that B&W or greyscale marks cover all colours.

Italy, France and Finland have not participated in the project.

(2) An insignificant difference between two marks is a difference that a reasonably observant consumer will perceive only upon side by side examination of the marks.

(3) The fact that the signs are not identical is without prejudice to a possible similarity between the signs which could lead to likelihood of confusion.

(4) General Court, 24 May 2012, case T-152/11; the Court took the view that, if no colour is claimed in the application, the use of different colour combinations “must be allowed, as long as the letters contrast against the background”. The Court also noted that “the letters M, A, D were arranged in a particular way in the CTM. Accordingly, representations of the sign which do not alter the arrangement of the letters, or the contrast of colour, constitute genuine use” (paragraphs 41 and 45).