The trademark protection extended to the trademark owners of black-and-white logos that only use the logo in question in colour may be at risk.
This is because the European Trademark Office and a large number of national trademark offices have recently issued new guidelines that can severely limit the extent of protection applicable to a figurative trademark – a simple logo or a combined word/figurative trademark – in black-and-white with regard to a number of aspects. To summarise, it has been decided that the registration of a logo in black-and-white no longer covers every colour combination.
Previously, the trademark owner had a great deal of room for manoeuvre. For example, when filing a logo, it was not important if the trademark owner did not yet know exactly which colour he would use for the logo or if he was intending to use the logo in a number of different colour combinations. The registration of a logo in black-and-white was all that was required to cover every use of the logo in question.
Under the new guidelines, the registration of a figurative trademark in black-and-white will no longer cover every colour use: black-and-white will be regarded as “colour” too and, as such, alternative use or the use of a different colour by third parties will be regarded as different.
New guidelines applicable immediately
The new guidelines primarily affect the principles of priority, the “normal use” of a trademark and the extent of protection extended to a registration in the event of a conflict. As the European Trademark Office and virtually all of the national trademark offices have started to apply these guidelines in new and existing (opposition) cases straight away, we advise that you take the time to assess how you use your brand portfolio and contact us if you have any doubts about the extent of protection applicable.
The official communication can be found on the OHIM website.