Whether it’s black or white may not have mattered to Michael Jackson (at least that's how the song goes), but it does seem to matter now to the Office for Harmonization in the Internal Market (OHIM) and other trademark offices of the European Union. These trademark offices have implemented new guidelines issued by the European Trademark and Design Network (ETDN) that affect the scope of certain trademarks in the European Union (EU).

Previously, OHIM treated Community Trade Marks in grayscale or black and white the same as how those marks are treated in the U.S. -- as not being limited to a particular color. For example, a trademark for the term NIKE with swoosh design in grayscale or in black and white would be afforded a broad scope of protection and considered to protect the same trademark in any color, such as pink or turquoise.

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This is no longer true – even with respect to marks that are already registered. Barring exceptional circumstances, registered and pending trademarks appearing in grayscale or black and white may now be interpreted as having a scope limited to their respective grayscale or black and white mark drawing. Although European practitioners differ in opinion as to how these new rules will be applied, this change is nonetheless significant for having the potential to affect validity and enforceability of at least some Community Trade Marks shown in grayscale or black and white.

In view of the new guidelines, owners of marks that are used predominantly in color in the EU, but that are registered or pending in grayscale or black and white, may want to consider filing new Community Trade Mark applications for the same mark in color.