Registering a logo as a trade mark is a major step in a business’ brand strategy. What would McDonald’s be without their highly recognisable Golden Arches, or Starbucks without their blazing green mermaid emblem?
Our clients often ask whether they should register their logo in colour or black and white. Their concern is that if they register their logo in one colour, this may prevent them from expressing their logo across their branding portfolio in other colours.
The approaches to colour trade mark registration vary across countries. We set out the positions in Australia, New Zealand, the United States and Europe and provide some recommendations for brands looking to expand overseas.
Australian Trade Mark Position
In Australia, filing your trade mark in colour does not usually limit the rights of your mark. Regardless of whether you submit your application in black and white, grayscale or colour, IP Australia will register your mark in respect of all colours.
This means that provided the main features of your logo stay the same, you can, in fact, express the image in different colour variations and retain protection.
Limitations
There may be situations, however, where it is appropriate to specify a colour and place. This is known as a ‘limitation’ under section 70 of the Trade Marks Act 1995 (Cth).
One situation where this may arise is if there is a registered trade mark that may conflict or present an obstacle for registration. For instance, a red cross with a white background (known as a Geneva Cross) is protected under the Geneva Conventions Act and cannot be registered as part of any other trade mark. So, a mark that contains the symbol of a cross would need to limit their registration to colours that are not red and white. Placing this limitation on the trade mark would make registration possible.
Overall Impression
With any logo trade mark, the key consideration is the ‘overall impression’ of the mark — this is what defines the mark.
When it comes to colour, the golden rule to remember is that if the changes to your mark vary the impression the mark creates, it may fall outside the scope of trade mark protection. For instance, removing the colour from McDonald’s Golden Arches trade mark doesn’t remove its overall impression — we would still recognise the M-shaped arches in any colour. For this reason, it is common for clients to register their trade mark in black and white or grayscale and then adapt the colour scheme to maintain consistency with their brand strategy.
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The New Zealand Position
Trade mark law in New Zealand takes a similar approach to Australia. Regardless of whether you file a trade mark in black and white or colour, you can use the mark for any colour (unless the application specifies a limitation).
But this will not be the case if the colour is considered the distinctive element of the mark. In these instances, removing the colour would remove the distinctive element of the mark, and it would no longer meet the registrability requirements for a trade mark.
The United States Position
The US position is similar to Australia and New Zealand. If you register a trade mark in black and white, it will receive protection in any colour.
If a trade mark is registered in a particular colour or combination of colours, however, actual use of the mark in a different colour scheme would likely affect the validity of the trade mark.
A trade mark used in this way may be considered a material alteration of a registered trade mark. This can mean that the trade mark application or registration may not be valid or enforceable.
The European Union Position
The European Union (EU) recently changed their position regarding colours in trade mark. Before 15 April 2014, the EU’s position was similar to the Australian position — black and white versions of a logo that are registered as a trade mark would be protected in any colour.
Under the new rule, a logo trade mark filed in black and white or grey will not necessarily 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 new rule states that a trade mark in black and white is not identical to the same mark in colour, unless the differences in colour are insignificant.
The marks below are examples provided that show insignificant difference.
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The images below show significant differences in colour and highlight the restrictive scope of the EU rule.
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What Does This Mean?
There are two prominent scenarios where logo registration in the EU is now of questionable value.
- Removal or cancellation of ‘unused’ trade mark: Third parties could cancel any unused black and white versions of a used colour trade mark on the EU trade mark register. This means a third party who wants to remove a competitor’s mark for non-use in its registered form could now do so.
- Difficulty of enforcing infringement: If a logo is registered in black and white and an infringer uses the logo in a prominent colour, it may be harder to prove infringement of the black and white logo. This is because, under the new rule, the two marks would be considered ‘not identical’.
Key Recommendations
In light of the different regulations around the registration of coloured logo marks in the EU and Australia, businesses should know which apply before entering into international markets. As an Australian-based brand looking to expand oversea, it is important to consider the following:
- When applying for a European trade mark application, file your mark predominantly in the colour it will be used. This principle also applies when making a Madrid Protocol application based on an Australian Trade Mark Application.
- Update any pre-existing black and white logo trade mark applications to reflect actual use. You will need to submit a colour logo in the EU if the mark is being used predominantly in a certain colour.
- Businesses should always consider registering a word mark along with registering their logo. This will expand their brand protection and is often the default trade mark position for many brands. You can read more about these differences in our article, ‘What’s the difference between registering my name and logo as a trade mark?’
- If a colour is a distinctive element of the mark, you should file it in colour.
