When is it appropriate to file a device or image mark in colour in Australia?

Key points

Filing a trade mark in black and white in Australia is considered generally to provide broad protection, being ‘deemed’ to cover all colours. It is also possible to file for a “series of marks” which differ only in colour, and this may be useful when a mark is used in colour and also in black and white, or when the broader protection of a black and white registration is wanted. However, in some circumstances, filing in colour may be the better option, for example in the following situations:

• when colour is an essential feature of the mark;
• when circumstances may arise during prosecution that make it preferable to file in colour, including:
  • acceptance requires limiting the mark to a specific colour or colours to support a claim of inherent distinctiveness
  • filing in colour may assist in differentiating the mark from a prior mark and avoid a citation objection
• if the Australian application or registration is the basis for filing under the International Registration provisions or for a convention priority filing in a country/region that has different rights resulting from black and white or colour mark registrations;
• the application filed in Australia claims convention priority from an overseas application that has a colour claim or limitation, requiring the Australian filing to be congruent with the basic application.

Where colour is an essential feature

In some cases (such as images that consist essentially of non-distinctive shapes or common devices) it may be that the colour or colours of the image contribute to the distinctiveness of the mark, and filing in colour and limiting the mark to the specific colours of the image will support an inherent registrability claim.

For images that are used consistently in colour, such that the colour is an essential feature of the mark, filing in colour is likely to provide the best protection.

Filing in colour for a smoother prosecution process

Filing in colour provides the option of subsequently entering an endorsement against the application to limit it the mark to specific colour or colours. This may be useful to support a claim of inherent distinctiveness. In cases where evidence of use is needed to establish acquired distinctiveness, it may be the case that the evidence shows all use of the mark in colour, which evidence will only support an application filed in colour, and not an application filed in black and white.

It may be useful to rely on the colour of an image to establish that a mark is visually distinguishable from a prior registered or pending mark. Differences in the colours of images may be sufficient to defeat a citation objection.

Registration rights for black and white image marks are treated differently in various countries

The situation in the United States for an image registered in black and white is the same as that which applies in Australia and New Zealand, in that it is deemed to provide protection for all colours. However, use of the mark in colours different to the registered mark may have an impact on the validity of the registration if it constitutes a material alteration of the mark as registered. For the United States there may be value in registering an image mark in black and white to obtain the broad protection this provides and to register in colour to reflect how the mark is used.

The position in the Europe in respect of colour marks has recently changed. It is no longer the case that registration of an image mark in black and white is deemed to protect the mark in any or all colours. In addition, a registration of an image mark in black and white will not necessarily provide protection for an image mark that is used consistently in colour. In the EU rights granted by a black and white registration are not the same as those of a colour registration, unless the differences are insignificant. One strategy for filing in the EU may be to register an image mark in the colour or colours in which it is used, and also to register in black and white, particularly if the mark is used also in black and white.

In some Asian countries, registration of an image mark in black and white is not deemed to protect an image mark for all colours. More importantly, for the purpose of protecting a registration from non-use challenges and enforcing it against third parties, it is important to have a registration in the form in which it is used. For image marks consistently used in colour the strategy would be to file in colour.

The issue that arises for Europe and some Asian countries is that registration of images in black and white, if the marks are used consistently in colour, leaves the registrations vulnerable to cancellation for non-use. Such registrations may be of limited value when seeking to establish infringement by relying on a registered black and white image mark.

Claiming priority from an overseas application filed in colour

The situation in the United States is that an application filed in colour is subject to a colour claim identifying the colours of mark. A mark filed in colour in the United States gives rights to the mark in the form in which it is registered. For example, use of the mark in colours that are different to the registered mark is likely to affect the validity of the United States registration because it is a material alteration of the mark as registered.

When claiming convention priority for an Australian application based on a United States application which has a colour claim, it will generally be required to enter a colour limitation against the Australian application along the following lines:

Registration of this trade mark is limited to the colours X and Y as shown in the representation attached to the application.

Filing a trade mark in other jurisdictions based on an Australian registration or application

For many years it was common practice in Australia to file image marks in black and white to take advantage of the broad deeming provision that a registration in black and white, or in colour but without any colour limitation, is deemed to cover all colours. When technology made it easier to file applications with colour images, this became more common.

However, when filing an application in Australia that is to be the basis for filing overseas, it is important to consider the implications of filing in black and white or in colour in the countries of interest. For example, in Europe and parts of Asia it would be preferable to file in colour if a mark is used in colour or if colour is an essential feature of the mark. This would require filing the Australian application in colour to allow an overseas filing claiming convention priority or utilising the International registration process.

If you have any questions please contact the FB Rice trade marks team.