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European Community Trademarks – Why it Now Matters if They’re Black and White (or Grayscale)

Whether it’s black or white may not have mattered to Michael Jackson (at least that's how the song goes), but it does seem to matter now to the Office for Harmonization in the Internal Market (OHIM) and other trademark offices of the European Union. These trademark offices have implemented new guidelines issued by the European Trademark and Design Network (ETDN) that affect the scope of certain trademarks in the European Union (EU).

Previously, OHIM treated Community Trade Marks in grayscale or black and white the same as how those marks are treated in the U.S. -- as not being limited to a particular color. For example, a trademark for the term NIKE with swoosh design in grayscale or in black and white would be afforded a broad scope of protection and considered to protect the same trademark in any color, such as pink or turquoise.

This is no longer true – even with respect to marks that are already registered. Barring exceptional circumstances, registered and pending trademarks appearing in grayscale or black and white may now be interpreted as having a scope limited to their respective grayscale or black and white mark drawing. Although European practitioners differ in opinion as to how these new rules will be applied, this change is nonetheless significant for having the potential to affect validity and enforceability of at least some Community Trade Marks shown in grayscale or black and white.

In view of the new guidelines, owners of marks that are used predominantly in color in the EU, but that are registered or pending in grayscale or black and white, may want to consider filing new Community Trade Mark applications for the same mark in color.

© 2019 Sterne Kessler

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About this Author

Monica Riva Talley, Trademark Attorney, Sterne Kessler, Law Firm
Director

Monica Talley brings more than 17 years of experience protecting some of the world's most recognizable brands to her role as a Director in the firm’s Trademark practice.  Ms. Talley specializes in strategic trademark counseling and portfolio management, developing anti-counterfeiting solutions and strategies, and trademark enforcement. 

Ranked as one of the leading trademark prosecution and strategy attorneys in Washington, DC, Ms. Talley is particularly noted for her global brand protection and commercialization strategies, and is lauded by clients for utilizing “her broad IP savvy...

202-772-8688
Tracy-Gene Durkin, Mechanical Patent Trademark Attorney, Sterne Kessler law firm
Director

Ms. Durkin leads the Mechanical Patent and Trademark Group.  With over twenty years of experience obtaining and enforcing intellectual property rights, she melds her expertise with utility and design patents, trademarks, and copyrights to create a unique IP protection strategy to meet her clients' individual needs.  Ms. Durkin’s experience includes helping clear new products and trademarks for use in the marketplace, selecting appropriate IP protection, and enforcing such protection through mediation, litigation and licensing.  She is sought out for her knowledge of design patents, brand development strategies and eliminating copycat consumer products from the marketplace to prevent the devaluation of IP rights

202-772-8660
Ivy Clarice Estoesta, Mechanical Design Attorney, Sterne Kessler Law Firm
Associate

Ms. Estoesta is an associate in the Mechanical and Design practice group at Sterne Kessler.  Ms. Estoesta’s practice focuses on trademarks, design patents, and copyrights.  Her legal experience, which began at the firm, and academic background provide her a multidimensional perspective in securing comprehensive IP rights for an array of clients in various industries, including pharmaceuticals, dietary food and beverages, footwear, electronic devices, and household cleaning products.

Ms. Estoesta joined the firm in 2006 as a legal assistant in...

202-772-8686
Julie D. Shirk, Patent & Trademark Specialist, Sterne Kessler Law Firm
Patent & Trademark Specialist

Julie D. Shirk joined Sterne Kessler in 1989 and continues to specialize in patents and trademarks in the firm's Mechanical Group.

202-772-8632