Trade Mark Protection – is it black and white?
● The Office for Harmonization in the Internal Market (OHIM) updated its guidelines in relation to the
treatment of black and white or greyscale trade marks in comparison with colour versions of the same
sign.
What's it about?
OHIM has clarified its practice in relation to the treatment of black and white, greyscale and colour
versions of the same mark.
The practice guidelines address the following issues:

For the purposes of a priority claim, is a trade mark in black and white or greyscale to be
considered identical to a colour representation of the same mark?
OHIM is now going to alter its practice, and allow priority claims where there are colour
differences between the respective trade marks.
Previously, if a black and white
representation of a trade mark had claimed priority from an earlier colour version of the trade
mark, OHIM would have rejected the priority claim. It will now accept claims in these
circumstances, provided that the differences in colour are so insignificant that they would go
unnoticed by the average consumer.

In opposition proceedings, is a colour version of the trade mark to be considered identical to
the same trade mark in black and white or greyscale, or vice versa?
OHIM has re-stated its current position that a colour version of a trade mark will not be
considered identical to a black and white or greyscale version of that same trade mark or vice
versa. This is because most customers will notice the differences between different colour
versions of the same mark. It is only in very exceptional circumstances that a colour version
of a trade mark will be considered to be identical to a black and white or greyscale version of
the same trade mark. This is where the differences in colour are so insignificant that they
would not be noticed by the average consumer.

In opposition proceedings, when considering whether an earlier trade mark on which the
opposition is based, has been put to genuine use, does the use of a colour version of the
trade mark which has been registered in black and white or greyscale, or vice versa,
constitute genuine use of that trade mark?
OHIM has provided further clarification that use of a colour version of the trade mark which is
registered in black and white, or vice versa, will constitute genuine use of the trade mark,
provided that the differences between the versions of the mark do not alter the distinctive
character of the trade mark. This will be the case where any word or device mark elements
are the main distinctive elements in each mark, the contrast of any shading is respected, any
colour combinations used are not distinctive in their own right, and where colour is not one of
the main contributors to the distinctiveness of the sign.
Why does it matter and now what ?
These amended guidelines, whilst useful, raise a number of issues. The first is that previously it was
assumed that the registration of a trade mark in black and white or greyscale, covered all versions of
the trade mark in whatever colour combination a mark was used. There may be instances where a
trade mark owner may need to protect colour versions of marks that have previously been registered
in black and white, particularly if there are any questions as to whether the colour version can be said
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to alter the distinctive character of the trade mark. This is more likely to be the case for more abstract
trade marks, without additional wording or specific graphic elements, where the specific colour or
colour combination can amount to an important feature of the trade mark. Such marks should be
protected in colour to ensure that the appropriate registered protection is in place.
It is also not clear yet exactly how these guidelines will be applied. We will have to wait for further
guidance from cases decided in the light of these guidelines.
OHIM implements the agreed common practice on black and white trade marks in its Guidelines
For further information on this or any other IP related matter please contact: Tim Carter on +44 (0)161
934 6197.
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