Protection of black-and-white trademarks

The rights to a trademark, recognized by national or European legislation, are protected from the moment the trademark is registered with a competent authority. However, before initiating the registration procedure, the applicant must be aware of certain legal limitations, some of which are even absolute. These can constitute grounds for refusal of registration or may lead to the declaration of a previously registered trademark as null.

The future holder of a trademark must be well-informed about the applicable legal provisions and the conditions that must be met to avoid a registration refusal. Lack of distinctive character, common signs in everyday language, and highly valued symbols are just a few of the absolute grounds for refusal. Additionally, relative aspects related to similarity with already existing trademarks must also be considered. To facilitate this process, there are tools and services such as the documentary research conducted by OSIM experts or access to national and international databases. Since July 30, 2018, OSIM has expanded the visual search functionality in the TMview database of EUIPO.

Once the trademark is registered, issues related to its use may arise, which could influence the exclusive rights granted to the holder.

In the case of black-and-white figurative trademarks, with or without verbal elements, there are often questions about their effective protection. It is important to clarify whether a black-and-white trademark covers its use in all colors or if there is a risk of confusion with a similar trademark in color. Recent European case law and EUIPO recommendations suggest that black-and-white trademarks do not benefit from unlimited protection, and the risk of confusion may arise if there are similarities between them and colored trademarks.

The decisions in "Specsavers" (C-252/12) and "Milanówek Cream Fudge" (T-623/11) emphasize that a trademark registered in black-and-white can be used in color, but the black-and-white registration does not cover all possible color combinations. Additionally, the Court of Justice of the European Union has indicated that consistent use of a trademark in a specific color may provide enhanced protection, but it does not transform the trademark into a renowned one.

In conclusion, holders of black-and-white trademarks must carefully analyze not only the legal and procedural provisions but also the limitations and practical implications of using the trademark. It is important not to rely on the old doctrine of "black and white covers all," but to evaluate how the colored variant of the trademark influences its distinctive character.