Further to our recent article on the changes of the common practice of several European trademark offices (including the OHIM, GPTO, etc.) on the treatment of colored trademarks we will now explain how the decisions will in our opinion change the practice of trademark filings in Europe.
Until now, it was usual practice in Europe to file trademark applications in black and white or in grayscale in order to obtain the best possible scope of protection for the trademark. A trademark filed in black and white or in grayscale could protect the mark in all possible color variations.
However, the recent announcements of the OHIM suggest that in future trademarks that are filed in black and white or in grayscale will only provide protection for marks wherein the color changes are so small and insignificant that the differences will go noticed by the public. Our Example 1 illustrates two trademarks wherein the identity might possibly be still acknowledged under the new practice (in the absence of any available court decisions, we reserve the rights of being wrong in our assessments):
Example 1: Trademarks with only insignificant differences of the color, which will not be recognized by the public.
However, in the following cases (Examples 2-4) we consider the differences as being not minor and significant, so that the trademarks might be considered being different from each other. This means that the use of the colored trademarks will no longer protect the corresponding trademarks registered in black and white or in greyscale.
Example 2: Trademarks which are only used in black and white or in greyscale will not protect trademarks filed in color.
Example 3: Different colors used in the trademarks will be noticed by the relevant public. Within the European trademark system these trademarks will be considered being different from each other.
In view of the above new practice, we can no longer advise our clients to submit trademarks in black and white or in grayscale, if they want to use their trademarks only in color. An application for a trademark in black and white or in grayscale will apparently no longer provide protection for the signs in all color variations.
Taking into account all circumstances of the individual case, it appears important already at the time point of filing the trademark application to make a decision on how the trademark should be used in future, in order to make sure that the form in use is identical to the trademark to be registered.
The owners of trademarks which are already registered in black and white or in greyscale should consider filing additional trademark applications for their marks in color, if they previoulsy used their trademarks only in color or if they consider using the colored version in future.
Picture (top): © Jonas Tana, [CC BY-NC-ND 2.0]; picture (bottom): © Marco Braun, [CC BY 2.0]
