Brand Owners Should Re-Evaluate Any EU Registrations in Black and White If the Mark Is Used in Color
Previously, a logo registered in black and white was considered sufficient to protect versions of the logo in any color, but this is not necessarily true for European Union (EU) Community Trade Marks (CTM). Under the new rule, logo trademarks filed in black and white or greyscale might not protect the same mark in color. This new approach will take effect on July 15, 2014, and it should be considered for both filing and enforcement strategies.
This is one of several changes aimed to harmonize the differing practices of national intellectual property offices in the EU. Previously, there was a general understanding that “black and white covers all colors,” so a trademark registered in black and white protected use in any color. Moving forward, however, the approach is “what you see is what you get,” so a mark registered in black and white must be used in black and white. This new practice is intended to reduce uncertainty for trademark owners since all participating EU national offices should apply the same rules. Nevertheless, this may create more uncertainty, at least in the short-term, since implementation of this new approach may vary among national courts, and a few EU countries are not participating.
There are two situations in which a black and white logo registration is now of questionable value. In a cancelation proceeding, a logo registered in black and white could be cancelled for non-use if it is only used in color. In an infringement action, a trademark owner will find it difficult to prove senior/priority use if their logo is registered in black and white but used in color. Use of the logo in black and white may avoid cancellation (even if the predominate use is in color), but such a registration will have less weight if an infringer is using a colored mark, even if the color is the same as the brand owner.
In light of these changes, brand owners should prioritize a review of their trademark registrations in the EU. Anyone filing for new CTM registrations should consider filing a color version of their logo. In addition, brand owners with existing black and white logo registrations should consider a new filing in color. This is particularly true if color provides distinctive character to the mark, or the mark is only used in color. If a word mark is integrated into your logo, a separate trademark registration for the word alone is also advisable.
Additionally, it is more cost effective to file new color applications than to renew black and white registrations, and a new registration cannot be challenged for non-use for the first five years. This is also an opportunity to update, and perhaps expand, the scope of the goods and services covered by the logo.
In short, EU community trademarks should be registered in color if they are used in color. Filing for a new color mark may be a better strategy than renewing a black and white registration. Finally, word marks that are integrated into design marks should be registered separately for optimal protection.