For trade marks, colour is the new black

Our clients often ask us whether to register their logo as a trade mark in black and white or in colour.

For many years, in the UK and the EU the position was that black and white logo marks covered use of the logo in any colours. Therefore, you only needed to register your logo in black and white to cover all colour variations in which you could use your logo and still claim registered trade mark protection in it.

However, this position has recently changed, when the EUIPO issued Principles of the common practice in respect of scope of protection f black and white marks.

In short, black and white logo marks no longer cover all colours. There are certain circumstances in which black and white logos could cover use of the marks in different colours, provided a change only in colour would not alter the distinctive character of the mark.

The EUIPO provided further guidance on the requirements that have to be met for this to apply:

· the word/figurative elements in both black and white marks and colour marks must coincide and must be the main distinctive elements;

· the contrast of shades must be respected;

· colour or combination of colours must not possess distinctive character in itself; and

· colour must not one of the main contributors to the overall distinctiveness of the mark.

These rules affect several aspects of trade marks, including the question on whether the mark was put to genuine use in trade. As such, if you have a trade mark registered in black and white but you have only been using it in colour, then in particular circumstances your mark could be cancelled for non-use after 5 years of registration.

It remains to be seen how these rules are applied by national courts.

In light of the above, our recommendation would be to review your trade mark portfolio and file additional trade marks in colour(s) you use if you only have them registered in black and white.

Briffa, being expert in all aspects intellectual property law and practice, will be happy to help you put a trade mark protection strategy in place and/or review your existing trade mark portfolio and advise on recommended top up filings. If you would like to discuss protection of your brand, please drop us an email or give us a call and we will be happy to arrange a free consultation with one of our specialist IP lawyers.

Written by Anastasia Troshkova – Associate