What does a colour variation mean for your trade mark?

A trade mark is a sign used to distinguish the goods and services of one undertaking from those of another. In other words, a trade mark enables consumers to identify goods or services as originating from a particular company or relating to a certain product or service. A registered trade mark provides the mark owner a monopoly right to use that mark in the goods and services (and those that are confusingly similar) in which it is protected.

The process to register a trade mark in the UK consists of the following stages:

1. Application: we as expert intellectual property lawyers will discuss your business activity and plans to draft an extensive trade mark application;
2. Examination: once an application has been submitted, the mark is examined by the UKIPO;
3. Publication: upon acceptance, the mark is then published for opposition purposes for a period of two months (extendable by a further one month); and
4. Registration: relief! At the end of the publication period, the UKIPO will process the mark for registration.

When going through this process, businesses often protect both a word mark and a logo. However, one question that is often asked is what happens when a company decides to rebrand and perhaps changes the colours of its logo?

Well recent case law suggests that if the mark is registered in a black and white or greyscale version then it can be argued that the protection afforded to it is in all colour variations so long as the mark itself remains the same (other than the colour). Furthermore, logos are often also protected by copyright as artistic works and therefore, even where a weak argument is made that the infringing mark is of different colour, the mark owner can rely on both trade mark infringement and copyright infringement to forward their case.

However, the mark owner may encounter issues where the trade mark is made subject to the five year proof of use test at which point they will be required to demonstrate use of the mark exactly as it is registered. Despite this, case law does suggest that minor variations, so long as they do not change the characteristics of the original mark, can be overlooked when demonstrating use of the registered mark.

If you are planning to rebrand, why not speak to us to understand whether you require fresh registration or if your existing registration will suffice for protection. Simply contact us at info@briffa.com.

Written by Mohammad Khan – Solicitor