In Short
- Trade mark registration in colour or black and white varies across countries, each with different implications.
- Australia and New Zealand offer broad protection regardless of colour, but limitations may apply in some cases.
- The EU and UK may limit the protection of black-and-white marks when used in colour, affecting enforcement and registration.
Tips for Businesses
When registering your logo, consider your key markets. In regions like the EU or UK, file your trade mark in the colour you plan to use, especially if that colour is a key feature of your brand. This ensures broader protection and reduces risks associated with non-use or infringement.
Registering a logo as a trade mark is a significant step in a business’ brand strategy. What would McDonald’s be without their highly recognisable Golden Arches? As a business owner, you may be wondering whether to register your logo in colour or black and white. You may worry that registering your logo in one colour could restrict its use in other colours across branding. The approaches to colour trade mark registration vary across countries.
This article outlines the positions in Australia, New Zealand, the United States, the United Kingdom, and Europe, along with recommendations for brands looking to expand overseas.
Australian Position
In Australia, filing your trade mark in colour does not usually limit your rights. Whether in black and white, grayscale, or colour, you gain broad rights to use your logo in all colours.
As long as your logo remains the same, you can express it in different colour variations while retaining protection.
Limitations
Australian trade mark law allows specifying a colour or placing restrictions on a trade mark in certain situations. This is known as a ‘limitation’. Limitations may be necessary when a proposed trade mark conflicts with existing registrations or faces obstacles to registration.
For example, the Geneva Cross, a red cross on a white background, is protected under the Geneva Conventions Act. If your mark includes a cross, you may need to restrict its registration to colours other than red and white. By placing this colour limitation on the trade mark, registration may be possible.
Overall Impression
The key consideration for any logo trade mark is the ‘overall impression’ of the mark. This is what defines the mark. Remember, changes to your mark that alter its impression may fall outside the scope of protection.
For instance, removing the colour from McDonald’s Golden Arches trade mark does not remove its overall impression. The distinctive shape and form of the arches remain instantly recognisable.
The New Zealand Position
Trade mark law in New Zealand follows a similar approach to Australia. Regardless of whether you file a trade mark in black and white or colour, you can use the mark in any colour (unless the application specifies a limitation).
However, this will not be the case if the colour is considered the sole distinctive element of the mark. In such cases, removing the particular colour would remove the mark’s distinctiveness, and it would no longer meet the registrability requirements for a trade mark.
Continue reading this article below the formThe United States Position
The US position is similar to Australia and New Zealand, although there are some notable differences. If you register a black and white trade mark, it typically receives protection that extends to its use in any colour. This means your black and white logo registration can cover various colour iterations of your logo
If you register a trade mark in specific colours, using it in a significantly different colour scheme could affect its validity or enforceability. Altering the colours substantially may raise questions about the trade mark’s continued validity or its ability to be enforced.
It is important to note that you must choose whether to claim colour as a feature of your logo. If your branding relies heavily on colour, consider registering a trade mark for the colour version and one in black and white for broader protection of the design.
The European Union Position
The European Union adopted a significant change to its position regarding coloured trade marks in 2014. Prior to this, the EU’s position was similar to the Australian position.
Under the current rule, a logo trade mark filed in black and white or grey will not automatically protect the mark in a colour version. Trade mark applicants should use this position to inform their decision when filing or enforcing their mark in the EU. The current rule states that a trade mark registered in black and white is typically not considered identical to the same mark in colour, unless the colour differences are minimal.
Implications for Your Business
There are two common scenarios where a black and white logo registration in the EU is now of questionable value:
- removal or cancellation of ‘unused’ trade mark: if you have a registered black and white logo but only use the colour version in the EU, third parties could try to cancel the black and white registration for non-use. They can do this unless the differences between the black and white and colour versions are considered insignificant; and
- difficulty of enforcing infringement: if you have a registered black and white logo and an infringer uses a similar logo in colour, it may be harder to prove infringement. The EU Intellectual Property Office (EUIPO) may consider the two marks “not identical,” making enforcement more difficult.
Given these implications, when registering your logo in the EU, you should consider filing your trade mark application in the colour you plan to use, particularly if that colour is a key feature of your brand.
The United Kingdom (UK) Position
The UK generally aligns its approach to colour trade marks with that of the European Union. A trade mark registered in black and white in the UK is usually not considered identical to the same mark in colour, unless the colour differences are minimal. As a result, businesses in the UK face similar risks as those in the EU, including potential cancellation for non-use and challenges in enforcing trade mark rights if only the colour version is used.
This guide explains the essentials of trade marks and the steps required to register a trade mark.
Key Takeaways
Given the varying regulations on coloured logo marks, particularly between regions like Australia/New Zealand and the EU/UK/US, it’s essential to understand your key markets before filing a trade mark application overseas. In the EU or UK, file your trade mark in the colour you will use.
If you need assistance in strategising your approach to trade mark registration, our experienced intellectual property lawyers can assist as part of our LegalVision membership. For a low monthly fee, you will have unlimited access to lawyers to answer your questions and draft and review your documents. Call us today on 1300 544 755 or visit our membership page.
Frequently Asked Questions
Trade mark registration is an important way to protect your brand. By registering your trade mark, you are protecting your brand and ensuring that others cannot use your business name, logo or slogan. If another business does use a trade mark similar to yours, they are likely infringing your trade mark registration.
In Australia, it does not matter what colour you register your trade mark in. You can submit your application in black and white, grayscale, or colour, and IP Australia will register your mark for all colours.
In the European Union, a logo trade mark filed in black and white or grey may not protect the mark in colour.
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