If you have registered a devicemark in black and white but use it in colours, you may have to register it again in colours.
The Community Trademarks Office OHIM and a number of national trademarks offices in Europe have issued a common communication on the “Common Practice of the Scope of Protection of Black and White (“B&W”) Marks” on April 15, 2014. You can read the communication here.
The essential message is that the offices consider a trademark registered in B&W to have been registered in the “colours” black and white. This implies that use of the mark in other colours than black and white may not be recognized as use of the registered trademark. There are a number of guiding principles for when use of the registered B&W mark in colours will satisfy the user requirement, but it is very dificult to give any general indications about it.
If the use in colours is not recognized as use of the B&W mark, there is a risk that the registration will be cancelled if attacked when the user requirement commences (five years after completion of the registration procedure).
As a result of this new practice Zacco recommends all its clients to obtain an evaluation of the existing portfolio of devicemarks registered in B&W in order to ascertain whether there is any need to re-register them in colours in order to secure the value of the trademarks.
You can read more about Community trademarks and devicemarks in B&W in Zacco’s article. This article first appeared in World Trademark Review Yearbook 2014/15, a supplement to WTR magazine, published by The IP Media Group. To view the guide in full, please go to www.worldtrademarkreview.com’.