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

Deals between five more law firms and President Trump and an antitrust lawsuit against Amgen were also among the top talking points this week
US counsel explain how they win new cleantech IP business and how they’re navigating the industry’s challenges
Leaders at the IP firms, which have joined forces with backing from a PE investor, share their vision of building the number one pan-European IP practice
Firms will steer clients towards other ways of getting quicker examinations, but fear the ramifications of the USPTO’s decision
Melissa Haapala added that returning to client advocacy and the chance to work on patent litigation were reasons for returning to private practice
Michelle Clark, who has a generalist litigation background, plans to focus on IP disputes at Alston & Bird
Philips and Vivo have entered into a licensing agreement, putting an end to a five-year-old telecom SEP dispute in India
Stefan Müller discusses managing deadlines, the importance of reflection, and why IP is more than just a 'nice to have'
The three founders of the IP firm’s new US offering say they plan to offer a unique proposition in a market fixated by the billable hour
The opinion provides useful guidance when it comes to how courts might consider contributory infringement, DMCA claims, and other issues in AI copyright cases
Gift this article