According to the regulations on trademark protection of Vietnam and most countries in the world, a trademark can be registered for protection in the form of black and white, along with the form of color.
Some general observations
According to the regulations on trademark protection of Vietnam and most countries in the world, a trademark can be registered for protection in the form of black-and-white, color or both black-and-white and color.
Nevertheless, some frequently asked questions are:
- What level can the protection of a black-and-white trademark or a trademark in color get? Which trademark is more strongly protected?
- What is the relationship between a black-and-white trademark and the same trademark but expressed in color?
These questions are not easy to answer in the most general way since not all countries’ intellectual property laws have specific provisions on the scope of protection of black-and-white trademarks and color trademarks. Furthermore, not all regulations related to the above issue are the same in different countries in the world. However, two major approaches to the protection of black-white and color marks can be distinguished based on legal provisions and applied practice.
The first approach: The trademark’s scope of protection tightly depends on the registered trademark model, or how a registered trademark will be protected in the same way. Hence, the owner of a black-and-white trademark cannot arbitrarily use the mark in arbitrary colors, or in other words, such use is not under the rights of the trademark owner.
The second approach is more flexible: A trademark registered in black-and-white means that its content (image/text) is protected. Therefore, the mark can be used in colors other than black and white as long as the shapes/texts remain the same and the colors utilized are not distinctive. If color is a component that contributes to a mark’s distinctiveness on its own, it is required to register the mark as a color in order to get the most effective protection.
Hence, regarding the answer to the first question, commonly, a trademark registered in color is more strongly protected than a trademark registered in black and white. Not only are color trademarks protected in content (image/texts) like a black-and-white trademark, but they are also protected in colors or color combinations, which helps to protect them against both infringements using confusingly similar color combinations. However, when the color form has been registered, the trademark owner is limited in using it, i.e., they can only use the trademark precisely as the registered model. Meanwhile, the black-and-white trademark has the advantage of allowing the brand owner to use the trademark flexibly in a broader way, in different color schemes which are suitable to actual conditions. To obtain the most effective protection, trademark owners should register their trademarks in both black-and-white and color, if they qualify the requirements.
Regarding the second question, the main problems often raised about the legal relevance between a black-and-white mark and the same trademark in color are:
- Priority right:
Can a pre-existing black-and-white trademark be the basis of a claim for the same trademark applied for in color?
- Use as a basis for registration denial:
Can a pre-existing black-and-white trademark be used as a basis for rejecting a trademark identical to this trademark but in color?
- As proof of use:
Is the use of a color version of a black-and-white registered trademark permissible as proof of use of that black-and-white trademark?
Because there are variances in the laws of each nation, even industrialized ones or within a tight union like the EU, the above three issues do not have a unified answer for all countries. As a result, international law must be harmonized in terms of the scope of protection of black-and-white and color trademark, at least for each group of countries or region.
On April 15th, 2014, the EU issued “The Common Communication on the common practice of the scope of protection of black & white marks”. It is the result of cooperation between intellectual property authorities within the EU to harmonize black-and-white trademark protection practices within the Union’s countries.
The notice includes general provisions on how to apply the law to the three issues relating to the protection of black-and-white trademarks listed above:
- About priority right
According to the regulations, a trademark that wants to enjoy priority must be based on the same trademark that has been filed for registration before, so any difference between the related marks will be objectionable. Therefore, an already registered black-and-white trademark will not be considered as the basis for a claim of priority over the same trademark applied for registration in color. However, if the color difference is so small that the average consumer is not aware, then the marks can be considered to be identical in order to be able to claim priority.
- Regarding the possibility of using as a basis for refusing to register a trademark:
The difference between black-and-white and color marks, although having the same shape and lines, but generally it is recognizable to the average consumer, so it cannot be considered the same as a basis for refusal of registering trademark. Only in exceptional cases, where the difference is not significant and the average consumer can’t easily identify it, then the marks considered to be identical.
- Regarding the possibility of being used as evidence of trademark use:
Whether the use of a color version of a registered black-and-white trademark is deemed to have been used will depend on the individual case. The use of color in a registered black-and-white trademark will not be deemed to alter the mark if: the text/graphic elements remain the same and are the principal elements; dark and light contrast is preserved; Color is not distinctive in itself and is not a distinguishing feature of the mark.
Comment:
The provisions under the above Communiqué initially unify the approach related to the protection of black-and-white trademarks within the European countries. However, these regulations only solve one side of the problem, that is, only regulate the influence of a black-and-white trademark on its color variations. On the other hand, whether a color trademark can be considered duplicate to give priority to a black-and-white trademark or can serve as a basis for rejecting a black-and-white trademark has not been mentioned.
The above harmonization is not complete because there are 6 countries in the EU that do not participate in this Project. Italy, France, Finland did not participate in the Project and Denmark, Norway and Sweden withdrew due to differences or restrictions by national laws.
Realities of Vietnam and suggestions for the future
Regulations on trademark protection in Vietnam as well as guiding documents do not have specific provisions on the scope of protection of black-and-white marks and color marks, as well as the correlation between a black and white mark and color trademark.
However, the realities of trademark protection in Vietnam allows a trademark registered in black and white form to be used in different color forms, as long as the text/image contents of the trademark are preserved and does not infringe the rights to another person’s registered black and white or color trademark.
According to the interpretation of the Intellectual Property Law of Vietnam and in reality, the application of the provisions of the Vietnam Law regarding the extent of trademark protection of black – white trademarks has many similarities with the provisions in the EU Joint Communiqué statement dated 25/04/2014 mentioned above. However, there are no specific provisions in the Intellectual Property Law as well as its sub-laws in determining the scope of protection as well as the right to use related to black and white and color trademarks. That makes it difficult for trademark rights holders as well as stakeholders to implement the law.
Therefore, in the mission to constant… efforts to perfect the Intellectual Property Law and the accompanying guiding documents in the near future, it is necessary to include specific provisions on the protection scope of black and white trademarks and color trademarks in a flexible approach as outlined above. In addition, the EU Joint Communiqué will also be a good reference for the above purpose.
(Source: NOIP)
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