OHIM and EU offices clarify practice on B&W trade marks

Managing IP is part of Legal Benchmarking Limited, 4 Bouverie Street, London, EC4Y 8AX

Copyright © Legal Benchmarking Limited and its affiliated companies 2025

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

OHIM and EU offices clarify practice on B&W trade marks

A group of IP offices in Europe have published a Common Communication detailing a common practice on the scope of protection for black and white trade marks

The Common Communication applies to most national offices in Europe, and to OHIM, which will implement it in its Guidelines on June 2 this year. Italy, France and Finland did not participate in the project.

The Communication, published on April 15, is part of a convergence programme between IP offices, and comes after the issue was addressed in recent cases. It addresses three questions:

  • Is a trade mark in B&W and/or greyscale from which priority is claimed identical to the same mark in colour?

  • Is an earlier trade mark in B&W and/or greyscale identical to the same mark in colour when assessing relative grounds?

  • Is the use of a colour version of a trade mark registered in B&W/greyscale (or vice-versa) acceptable for the purpose of establishing genuine use?

Further analysis will be published shortly.

more from across site and SHARED ros bottom lb

More from across our site

Leaders at the newly merged firm Jones Maxwell Smith & Davis reveal their plan to take on bigger firms while attracting more clients and talent
Charles Achkar, who will bring a team of two with him, said he was excited about joining ‘one of the few strong IP boutiques’
Andy Lee, head of IP at Brandsmiths and winner of the Soft IP Practitioner of the Year award, tells us why 2024 was a seminal year and why clients value brave advice
The deal to acquire MIP's parent company is expected to complete by the end of May 2025
Jinwon Chun discusses the need for vigilance, his love for iced coffee, and preparing for INTA
Karl Barnfather’s new patent practice will focus on protecting and enforcing tech innovations in the electronics, AI, and software industries
Partner Ranjini Acharya explains how her Federal Circuit debut resulted in her convincing the court to rule that machine learning technology was not patent-eligible
Paul Hastings and Smart & Biggar also won multiple awards, while Baker McKenzie picked up a significant prize
Burford Capital study finds that in-house lawyers have become more likely to monetise patents, but that their IP portfolios are still underutilised
Robert Reading and Faidon Zisis at Clarivate unpick some of the data surrounding music-related trademarks
Gift this article