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

Managing IP is part of Legal Benchmarking Limited, 1-2 Paris Gardens, London, SE1 8ND

Copyright © Legal Benchmarking Limited and its affiliated companies 2026

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

Executive chair Matt Dixon, who reveals a new associate hire, says the firm wants to offer a realistic pathway to partnership while avoiding the ‘corporate machine’ route
Mayer Brown’s role in cardiovascular technology dispute reflects how firms are pursuing precedent-setting cases to try and guide AI and patent law
Kevin Mack, Via’s new president, emphasises the importance of collaborative licensing structures and shares how AI tools can help create new lines of business
A Tokyo District Court ruling concerning movie spoilers, and a second chance for VLSI against Intel were also among the top talking points
Practitioners believe new AI tools at the USPTO will not replace lawyers or disrupt revenue, but instead expose where a trademark attorney’s value lies
Leighton Cassidy Legal hopes to leverage its founder's international experience and provide clients with a rare chance to receive litigation and prosecution under one umbrella
UKIPO rejects trademark application for 'Cristiano Ronaldo Origins' following opposition by Beck Greener client in a rare case that considered actual use
Partners at both firms have voted in favour of the tie-up, which marks ‘the largest law firm merger in history’
Head of IP, Andrew Brennan, and new partner, France Delord, explain how tech provides an edge in the battle for global brand owners’ business
Anton Hopen, shareholder at Trenam Law, shares how counsel should construct Section 101 claims as early 2026 PTAB data shows reversals rising in technical cases
Gift this article