OHIM Changes Practice for Black and White Marks

On June 2, 2014, the European Community Trade-mark Office (known as “OHIM”), changed its practice for trade0marks filed in black and white or gray-scale.  Specifically, while a black and white registration was thought to cover all colour variants of the mark, OHIM’s new policy suggests that this is no longer the case.  Under the new policy a black and white mark is not deemed to be identical to its colour variant.  Moreover, if colour gives the image a special effect, then a separate colour registration is required.  Use of a colour mark will only be deemed to be use of the black and white form (and vice versa) if the change in colour does not affect the distinctive character of the mark.  As a result, our European associates are recommending that in the case of designs, both black and white and colour versions of the mark be filed in the EU.  For further information about your international trade-mark portfolio or trademark strategy, please contact Paula Clancy.

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