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

Cookies Settings

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

Qantm CEO speaks to Managing IP about the business's first deal since it was acquired by a private equity firm and explains why top-tier Malaysian firm Henry Goh & Co was the group's ‘plan A, B and C’
György Pintz, founder of Pintz & Partners, talks through the challenges of founding a firm and explains why lawyers and table tennis players have more in common than you might expect
Kate Nuehring Su, partner at Marshall, Gerstein & Borun, explores a successful PTAB appeal and why the Federal Circuit reached an opposite outcome on the same doctrine
From BTS to Squid Game and kimchi to memory chips, the Korean wave is reverberating around the world and IP work is also seeing a boom, say two Yoon & Yang partners
Managing IP will host a ceremony in Kuala Lumpur on November 5 to reveal the winners
Recent lateral moves raise a bigger question for full-service firms – can patent litigation remain a strategic priority when competing practices generate larger profits?
As counterfeiters grow increasingly sophisticated, Gibson Dunn is differentiating its trademark practice through a focus on payment tracing, judgment enforcement and asset recovery
Anita Polott, who is celebrating three decades at Morgan Lewis this year, reflects on career progression, stepping into unfamiliar territory, and leadership frameworks
Technical excellence remains essential, but many firms are discovering that packaging IP with complementary practice areas can unlock new clients and a stronger competitive position
As international interest in Southeast Asia grows, Sheng Rong Tng discusses how changing client demands and the firm’s multidisciplinary model are helping it compete for complex regional mandates
Gift this article