The EU trade marks office (“OHIM”) has recently changed its practice concerning EU marks filed in black and white or colour. As a result trade mark owners should review their trade mark portfolio to ensure that the highest level of protection for their brand is maintained.
The old OHIM rule was that a logo filed in black and white would protect the same logo when used in colour. As a result, a logo in black and white provided the owner with the broadest protection possible.
But OHIM’s new practice means that a logo in black and white will not be deemed identical to the same logo in colour.
This new practice is advantageous to anyone intending to file an identical trade mark to yours in different colours. Instead of being able to protect your rights by claiming the marks are identical as a whole, OHIM will now take into account the colours of the trade mark, which leaves a black and white trade mark open to infringement. For the obvious reason it may prove disadvantageous to owners who only have protection for a logo in black and white.
Also, when it comes to showing that the mark is being used (if attacked during the process for applying for registration or after registration for non-use), OHIM will now only consider the mark in use if the use of colour does not alter the distinctive character of the registered trade mark. As a result owners will have to show that:
- the words/figurative element are the distinctive elements;
- the colour does not have a distinctive character in itself;
- the colour is not the main contributor of the distinctiveness of the mark; and
- the contrast of shades of the registered marks is respected.
Given OHIM’s new practice now is the time to review your trade mark portfolio. Are your logo trade marks filed in black and white but are used by you in a specific colour? Do you have the broadest protection possible? In order to maintain your rights under the OHIMpractice, now is the time to file new applications for your logo marks in all of the colours it is used.