Is it sufficient to use the trademark in a form different from how it was registered?

The trademark has not only to be registered but has to be actually used as well in the same form as it was registered. If the logo is altered only in minor elements which do not affect its distinctive character, use of the logo is still considered as genuine use of the trademark.

Genuine use of the trademark is only recognized when the trademark is used in a form which only differs from the registered form in elements which do not effect its distinctive quality.

In order to reduce risks to the minimal, it is advisory to register a new trademark in case of rebranding. Under these circumstances, the possible opponents can not request proof of use of the trademark for another five years.

Using the trademark in different colors do not affect its distinctive quality if the following conditions are satisfied:

a) the word/figurative elements coincide and are the main distinctive elements;

b) the contrast of shades is respected;

c) color or combination of colors does not possess distinctive character in itself and;

d) color is not one of the main contributors to the overall distinctiveness of the mark.

What is the range of protection in the case of black and white or greyscale trademarks?

A trademark in greyscale or in black and white is not identical to the same mark in color unless the differences in the colors or in the contrast of shades are insignificant. An insignificant difference between two marks is a difference that a reasonably observant consumer will perceive only upon side by side examination of the marks.

If a trademark is registered in black and white and then used in colors, it is usually considered as genuine use of the mark, except if the change in colors would alter the dominant elements of the mark.

Please note that different versions of the same trademark may be used in business as long as the differences in relation to the registered form do not alter the distinctive character of the mark. Use of the registered community trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered shall also constitute genuine use of the same trademark.

The requirements are as above: the distinctive character of the registered mark should not be altered and a change only in color does not alter the distinctive character of the trade mark, as long as these requirements are met. Besides,

- color or combination of colors does not possess distinctive character in itself; and

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

With respect to the color (or combination of colors) of the registered trade mark possessing or not distinctive character in themselves, the underlying idea is that on occasions, it is actually the color or color combination that possesses the distinctive character. For example, refer to the signs below, where the distinctiveness of the sign on the left could be considered to come from its colors or color combinations, thus making it difficult for the owner to prove use if the mark is only used in black and white.

Black and white/greyscale and color figurative marks are considered identical, if the differences between them are insignificant. Even if there is no identity, this does not exclude that there could still be likelihood of confusion if the marks are considered similar and the other necessary factors are present.

How to use figurative marks consisting word elements?

If you decide to register a figurative mark, you have to use the version of the mark together with the figurative element. It is possible that in some occasions you use only the word elements if you can prove the usage of the mark together with the figurative element in other occasions. Using the trademark with the figurative element is important also because 5 years after registration a cancellation (revocation) action can be initiated if proof of use is not provided in the form the trademark was registered.