A black and white issue


Fabian Müller

A black and white issue

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The impact on trademark owners of the new common practice on genuine use has been a matter of considerable debate, says Fabian Müller.

The Office for Harmonization in the Internal Market (OHIM) and several national IP offices in the EU, including the UK Intellectual Property Office and the German Patent and Trade Mark Office (DPMA), have agreed on a common practice regarding the handling of trademarks in black and white (B&W) and/or greyscale.

The common practice has been made public through a Common Communication on April 15, 2014 and has already taken effect in the offices implementing the new practice. In some offices such as OHIM and the DPMA, the new practice even applies retroactively, ie, to all pending applications and proceedings.

The need for a convergence of practice arose from the non-uniform way that B&W marks were treated by IP offices. In the past, some offices applied a “B&W covers all” approach (under which trademarks in B&W have protection for all colours and colour combinations), whereas others followed a “what you see is what you get” approach (meaning that trademarks filed in B&W are only protected as such).

trademarks; OHIM; DPMA; EU; black and white; trademark protection