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April 15, 2014 European Trade Mark and Design Network

Common Communication on the Common Practice of the Scope of Protection of Black &White ("B&W") Marks


Today, 15 April 2014,   the IP offices implementing the Common Practice of the Scope of Protection of B&W Marks have published on their respective websites a Common Communication detailing the Common Practice, listing the implementing offices and the individual implementation dates for each office.
The Common Practice is the result of collaboration between trade mark offices in the EU in the context of the Convergence Programme and aims at increasing transparency, certainty and predictability for examiners and users alike.
To arrive at a Common Practice, participating offices closely analyzed three important questions essential to handling trade marks in black and white:

  • 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?

The answers to these questions can be found in the Common Practice. OHIM will publish the implementation of the Common Practice in its Guidelines on 2 June 2014. The practice will enter into force immediately after publication.  In particular, the Common Practice will be reflected in the following sections of the Guidelines:

  • Guidelines, Part B, Examination, Section 2 Examination of formalities
  • Guidelines, Part C, Opposition, Section 2 Identity and likelihood of confusion, Chapter 3  Comparison of Signs
  • Guidelines, Part C, Opposition, Section 6 Proof of use.