Tuesday, 21 October 2014

New EU practice for black and white trade marks

The European Union (EU) has recently introduced a new practice for how black and white trade marks are dealt with.  The new practice affects all trade mark applications and registrations for Community Trade Marks and national trade marks in EU Member States, except for Denmark, Finland, France, Italy, Norway and Sweden.

What is the new practice?

Traditionally, most countries around the world adopt the practice that registering a trade mark in black and white provides protection for use of that mark in any colour.  However, the new EU practice has changed this position.  Under the new practice, if the use of colour amounts to an ‘alteration’ of the trade mark, then use of the mark in colour will not constitute use of the mark as registered.

Use of a black and white trade mark in colour will not be an alteration and will therefore constitute sufficient use if:
  • the words and/or figurative elements of the trade mark used and the trade mark as registered coincide and form the main distinctive elements
  • any contrasts in shades of the registered mark are reflected in the used mark
  • the colours of the used mark do not have distinctive character in itself, and
  • colour is not one of the main contributors to the overall distinctiveness of the used mark.

What is the effect of the new practice?

Applications for Community Trade Marks which are pending on or filed after 2 June 2014 will be subject to the new practice.  In addition, all proceedings concerning Community Trade Marks that are pending on or filed after this date will also be affected by the new practice.

How the national offices will treat the new practice depends on the implementation of changes in each country.  Generally, the new practice will only apply to trade marks or proceedings filed after the country’s implementation date of the practice.

However, the trade mark offices in Benelux, Denmark, Croatia, Portugal, Romania and Slovakia also apply the new practice to trade marks pending on the implementation date.  Each national office has its own implementation date for the new practice.

It is unclear whether the new practice will affect proceedings brought in regards to trade mark registrations pre-dating implementation of the new rules as the new laws have not yet been tested by any courts in the EU.  However, it is recommended that new trade mark applications be filed if distinctive colours are used, as black and white registration may be vulnerable to cancellation for non-use.


Trade mark owners should:
  • conduct a review of trade mark protection in the EU
  • consider whether the colours of the trade marks as used are considered to be distinctive to or important to the trade mark owner, and
  • file new trade mark applications where use of colour is considered to be important or distinctive.
McCullough Robertson can undertake a review of your trade mark portfolio and advise whether the use of colour in the existing trade mark applications may be considered distinctive. If you require assistance with any aspect of trade mark or Intellectual Property Law, please contact us.

Malcolm McBratney

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