As OHIM announces three primary changes to the treatment of trademarks in colour, trademark owners should review their marks to ensure adequate protection.

The Office for Harmonisation in the Internal Market’s announcement of a new common practice changing the treatment of black and white trademarks will come into service soon and affect community trademark and design registrations throughout the European Union. Basically, trademarks filed solely in black and white or greyscale will only be considered identical if the colour differences are insignificant. Similarly, in order to support a registration of a black and white trademark, the colour must not alter the “distinctive character” of the mark. The advice to trademark owners and applicants in the EU therefore is that the current registrations and actual uses of their marks be examined to ensure that they are fully protected. It should be kept in mind that the use of colour marks registered in black and white may be insufficient to maintain the registration of the mark in future.

The new common practice will greatly affect priority in that the change will mean that OHIM “will accept priority claims that it previously would have objected to”. Seemingly the same rule will apply in all EU offices. Whereas previously in offices following the “black and white covers all colours” approach, it is conceivable that fewer priority claims will be accepted. Claims where the consumer can tell the difference will be rejected by the office. Claims even where the mark was used in colour will be accepted as long as the difference is unable to be detected by the average consumer.

Refer to the forthcoming 2014 update to the OHIM Guidelines for additional information on the new common practice treatment of black and white trademarks. In the meantime it would be wise for EU trademark owners to establish whether they need to register in colour those marks which are presently only registered in black and white.

As far as future Community Trade Mark applications are concerned, we would recommend that they be filed in exactly the same way that the trademarks are used or intend to be used. In the United Kingdom, series trademark applications are acceptable so both the colour and black and white/greyscale versions of the mark can be included in the same application.

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