Scope of Protection for Black and White Marks in Vietnam and Overseas

Concerning provisions on the protection of trademark in Vietnam and the most jurisdictions in the world, a trademark application may apply for protection in the form of black-and-white (“B&W”) and/or greyscale, in a particular color or B&W and combinations of colors. However, the question often arises: i) The scope of protection for B&W marks and for color marks? To some extent, what types of marks receive wider scope of protection? ii) What is the relationship between a trademark registered in B&W version and in a color variant of the mark?

These questions are not easy to answer due to the difference in intellectual property laws. However, under the legislations and common practical it can be divided into two main approaches on scope of protection for B&W and color marks as follows.

The first approach, scope of trademark protection is depended closely on the sample of mark registered. Therefore, the owner of trademark registered in B&W can not arbitrarily use such mark under other color versions, in other words such use of the mark is not the scope of trademark protection.

The second approach, It is an important issue as B&W marks are often used as staples of trade mark portfolios in order to cover all possible colors of logos and figurative marks (in much the same way that word marks are used to cover all potential stylisations of words). 

On April 15, 2014, OHIM, the trademarks and designs registry for the European Union, published a Common Communication which announced significant changes to the European Common Practice on B&W trademarks as compared to those filed in color (the Common Practice). The Common Practice affects every B&W trademark registered or applied for as a Community trademark or as European national mark in any of the 22 national offices that have implemented the Common Practice. The Common Practice affects the following three areas of trademarks practice.

Priority claims

The Common Practice states that for the purpose of claiming Priority under the Paris Convention a B&W mark is not identical to the same mark in color unless the differences in color are insignificant.

Identity

The common practice states that a B&W mark is not identical to the same mark in color unless the differences in color are insignificant. An insignificant difference is what would not be perceived by the reasonably observant consumer upon a side by side examination of the marks.

Genuine use

Under the new common practice, a change in color alone does not alter the distinctive character of a B&W mark for the purposes of assessing use, provided that:

    i. the main distinctive elements of the marks coincide;

    ii. the contrast of shades is respected;

    iii. the color or combinations of colors does not possess a distinctive character in itself; and

    iv. color is not one of the contributors to the overall distinctiveness of the mark.

Practices and recent developments in Vietnam

At this point, regulations on trademark protection in Vietnam as well as the guidelines do not have specific provisions on the scope of protection for B&W and color marks. However, in practice, Vietnam allow a registered trademark in B&W can be used in different types of colors, as long as such use remains the main distinctive elements of the marks and do not infringe on other trademark rights.

Therefore, it is necessary to articulate the specific provisions on the scope of protection for B&W marks and color matters following to the flexible approach as mentioned above.

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Pham & Associates is an intellectual property law firm in Vietnam. We provide counsel and representation in every area of patents, trademarks, copyrights, enforcement of intellectual property rights as well as their representation in arbitration and litigation proceedings etc.

For further information about our organization and services, please visit our website: www.pham.com.vn