In Australia, as in most countries, when filing a device/logo trade mark in black and white, you will be afforded protection for the trade mark not only in black and white but in any colour. In fact, if you want your trade mark to be protected for specific colours in Australia, you must apply for a “limitation” of your trade mark to those particular colours with IP Australia.
However, for trade mark applications filed in the European Union (EU), black and white versions of the mark may not provide you with protection for use of the mark in its colour version(s).
Some EU countries adopted the “black and white covers all” approach, whereas others adopted the “colour is colours only” approach. As a result, national IP Offices and the EU IP Office devised the “Common Communication on the Common Practice of the Scope of Protection of Black and White Marks” (Common Practice) which was established back on 15 April 2014.
The practice has not changed but with the ever-increasing use of the Madrid Protocol, it is important to highlight the protection afforded by black and white vs colour marks in the EU as this may prompt some trade mark owners to consider a separate EU application to ensure proper coverage for their brand in the EU.
Does an EU trade mark registration in black and white cover use of the mark for all colours?
In short, not necessarily!
Prior to 2014, the EU’s position was in line with Australia; that is, a black and white trade mark would protect the owner for use of the mark in colour. However, from 15 April 2014, the EU changed its position as regards black and white and greyscale trade marks.
The new rule stated that a trade mark in black and white or greyscale is not identical to the same mark in colour unless the differences in colour are insignificant.
This change affects the following:
1) Priority claims – a priority claim requires an identical mark. A logo in black and white or greyscale from which priority is claimed is not considered identical to the same mark in colour.
2) Relative grounds – an earlier mark in black and white or greyscale is not identical to the same mark in colour.
3) Genuine use – use of a colour version of a registration for a device/logo in black and white or greyscale will not be seen as genuine use, unless:
a) the word/figurative elements coincide and are the main distinctive elements;
b) the contrast of shades is respected;
c) the 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.
4) Enforcement – if a mark is registered in black and white, it may be difficult to enforce your rights against a third party using the mark in colour as they may not be seen as identical marks. Also, if your registration is in black and white and you use your mark in colour, this means your mark could be vulnerable to a cancellation action.
Are all EU countries affected by the Common Practice?
Firstly, the Common Practice is not legally binding. Therefore, of the 27 countries in the EU, only 22 countries implemented the Common Practice, notably Sweden, Denmark, Finland, France and Italy did not. This means that the registrability of a black and white or greyscale trade mark in these countries will in fact protect the trade mark owner for use of the mark in all colours.
What should you do now?
Trade mark owners should ensure existing registrations provide the appropriate protection throughout the EU. If your EU trade marks are in black and white but you use the mark in colour, it may be necessary to consider filing a new application for the colour version of the mark to ensure you brand is properly protected through the EU.
If you have any questions concerning the protection of your device/logo marks in the EU, please contact one of the brandU Legal team for assistance.