Colour Marks (18-Oct-2017)
Does a Trade Mark in Black and White Matter?
The rules for colour trade mark registration depend on the jurisdiction in which you intend to register your trade mark. This blog article is intended to provide some cursory guidance on positions in five different countries, namely, Australia, China, Europe, the United States and New Zealand.
Australia
In Australia, whether you file your trade mark application in black and white, you generally retain protection in any combination of colours you wish.
As long as the essential features of your mark remain the same, you have the right to change and use different colours without losing protection, unless a limitation is stated during registration.
China
In China, whether you file your trade mark application in black and white, you generally retain protection in any combination of colours you wish.
The European Union (EU)
The EU has recently implemented a change in their trade mark colours position. Before April 2014, the EU has a similar position to Australia, which meant if you filed a trade mark application in black and white, you would retain protection in any colour.
Under the new rule, registering your mark in black and white does not automatically mean retaining protection in all colour versions, unless the variations in colour are irrelevant.
For this reason, it is important to ensure to file your trade mark using the colour you intend to use in practice. For any pre-existing mark it is advisable that you update them to reflect actual use.
The United States (US)
The trade mark colour position in the US follows a similar approach to Australia. Whether you file your trade mark in greyscale or black and white, it will generally obtain protection in any colour.
New Zealand
The trade mark colour position in the New Zealand follows a similar approach to Australia and the US. Whether you file your trade mark in greyscale or black and white, it will generally obtain protection in any colour.
Other Jurisdictions
A table detailing the application of black and white marks in a number of other jurisdictions is detailed below.
Designated Office (in order of number of trademark application originating from the United States of America)
Are series marks accepted?
Does the mark registered in black and white protect use of the mark in colour?
Does use of the mark in colour constitute evidence of use of the mark registered in black and white?
China
No
Yes
Yes
Japan
No
Yes
Yes
Republic of Korea
No
Yes
Yes
India
Yes
Yes
Yes
Hong Kong SAR
Yes
Yes
Yes
Malaysia
Yes
Yes
Yes
Singapore
Yes
Yes
Yes
Thailand
No
Yes
Yes
Philippines
No
Yes
Yes
Indonesia
No
No
No
Vietnam
No
Yes
Yes
Macao SAR
No
Yes
Risk of dispute
Source: http://www.insidecounsel.com/2016/01/22/protection-of-colored-trade-marks-in-asia#_ftn1 *
Image Sources: https://commons.wikimedia.org/wiki/File:Harlem_Micky_Dz.jpg *