Keywords: intellectual property, means of individualization, trademark, exclusive right, registration of trademark, application for a trademark, use of a trademark, examination of a trademark, black and white trademark, colour trademark
The trademark shall be, according to the Civil Code of the Russian Federation, “a designation that serves to individualize the goods of legal entities or individual entrepreneurs” [“The Civil Code of the Russian Federation (Part Four)” of December 18, 2006 No. 230-FZ].
To ensure the legal protection of the designation that you plan to use as a trademark for the individualization of the goods manufactured by you or services provided on the territory of the Russian Federation, you must register it in Rospatent – the Federal Executive Authority on Intellectual Property, by filing an application.
The trademark can be registered in any colour or colour combination (Clause 2 of Article 1482 of the Civil Code of the Russian Federation), and the manufacturers of goods and services, having made a decision on the registration, often face the question, what is preferable: to register a mark in color or in a black and white variant? And is it possible, for example, to file one application (usually in black and white), thus reducing the costs, but at the same time ensuring the legal protection for the own designation in all possible colour combinations and preserving the flexibility, while changing the colours in accordance with the market situation and new trends?
In practice, the answer to this question is in a universal recommendation: trademarks should be registered in the form in which you use them. That is, ideally the number of applications should correspond to the number of the colour combinations, in which you use and/or plan to use your designation. Otherwise, there may be difficulties with proving the use of the mark in the court, if any person undertakes the measures for the early termination of its legal protection.
So, in accordance with Article 1486 of the Civil Code of the Russian Federation (“Consequences of non-use of a trademark”), “The legal protection of a trademark may be early terminated with respect to all goods or a part of the goods for the individualization of which the trademark has been registered as a result of the non-use of the trademark continuously within any three years after its official registration.The application for the early termination of the legal protection of a trademark as a result of its non-use may be filed by an interested person to the arbitration court after the expiration of the aforesaid three years, provided that the trademark has not been used before filing such an application.” [“The Civil Code of the Russian Federation (Part Four)” of December 18, 2006 No. 230-FZ (as amended on 03.07.2016)].
If the mark is registered in black and white, there is a possibility that the use of the mark in colour may not prove the use of the mark registered in black and white, and vice versa.
The colour in which the trademark is registered is important not only in the issues of proving the use, but also in the issues of obtaining the protection – for your designation, as well as for the suppression of unfair competition.
In accordance with Clause 6 of Article 1483 of the Civil Code of the Russian Federation, with respect to the similar goods/services “... the designations shall not be registered as trademarks if they are identical, or confusingly similar to the trademarks of other persons applied for the registration ... and having an earlier priority, unless the application for the official registration of the trademark has been withdrawn, has been deemed withdrawn, or the decision has been made to refuse to register it officially; with the trademarks of other persons protected in the Russian Federation, including in accordance with the international treaty of the Russian Federation ... having an earlier priority,” as well as with commonplace trademarks.
As to the illegal use, in accordance with Clause 3 of Article 1484 of the Civil Code of the Russian Federation, “No one has the right to use, without the permission of the right holder, the designations similar to his trademark with respect to the goods for the individualization of which the trademark has been registered, or similar goods, if as a result of such use the possibility of confusion appears.”
In accordance with Clause 42 of the Rospatent Rules, the similarity of word designations shall be analyzed, including by graphic (visual) features, which include “colour or colour combination”; the similarity of figurative, three-dimensional, combined designations shall be determined based on, including, “a combination of colours and tones”(The Rules for drawing up, filing and considering the documents that are the basis for committing legally significant actions for the official registration of trademarks, service marks, collective marks)[Order of the Ministry of Economic Development of the Russian Federation of July 20, 2015 No. 482].
That is why, in the issues of obtaining the legal protection for the own designation, as well as protecting the rights to it after the registration, it is necessary to take into account the role that the colour/colour combination plays at the perception of the mark. The colour issue may be especially critical in the process of recognizing the mark as commonplace.
Here it is worth noting that there are some “technical” requirements regarding the use of colours; they are fixed in the Rospatent Rules. In accordance with Clause 27 of the Rules (“Requirements to presenting the applied designation”), “The image of the applied designation shall be presented in the colour or the colour combination in which the official registration of the trademark is claimed,” “if the applied designation is in a form other than black and white, then the application under code 591, its colour or colour combination shall be indicated.The description of colours should correspond to the colours used in the designation and contained in the reproduction; if the applied designation is in black-and-white, then no colour indication shall be required.”
In addition, Clause 69 of the Rules, which concerns making changes to the applied designation, reads that “essential” changes, which are the reason for the refusal to satisfy the relevant application, include, in particular, “... a graphic or sense change of the main figurative element or the color combination that influence the perception of the designation.”
There is a certain stereotype reinforced by individual examples of Rospatent's practice that the scope of protection for a black and white designation is somewhat wider than for a colour one; that it is necessary to apply a trademark in colour only if its colours give a special originality to the designation and the change in the colour range is not anticipated. However, the position of the examination in this respect is not permanent; therefore there are always certain risks.
When registering a trademark in black and white, the legal protection shall be granted to it exactly in a black and white version. The right holder of such a mark will not infringe the legislation by virtue of the very fact of using such a designation in color, but such color version will not actually have the legal protection. Of course, the legislation does not prohibit the use of a designation with a minor change. However, will the version of a trademark in another colour be qualified as a change influencing its perception? It is possible that it will be: the original colour solution can completely change the overall impression of the mark.
Not only in theory, but also in practice, the colour has a significant, sometimes decisive influence on the perception of the designation by the consumers. Sometimes it plays an even more “weighty” role than the outlines of the figurative element (let us remember the cellular communication operators: the majority of consumers associate any attributes in a yellow-black version exclusively with Beeline, in a red and white version – with MTS, in a green version – with Megafon). Due to colour, the trademark has a stronger emotional influence on the consumer. The combination of colours seriously influences the position of the goods/services on the market. It can be used as a powerful competitive tool. The colour itself often creates a certain image for the company. That is why having a fixed colour range it is important to obtain the legal protection for it.
Summing up, we would like to emphasize once again that we always recommend registering the mark in the form you intend to use it. If you are going to use the mark in several colour combinations, each combination must be registered individually. Of course, the position of the examination and courts in this issue is still not clear. The approach will be individual in each case and for each mark. But, ideally, each colour solution is an individual application. Therefore, if the funds for the registration are limited, we recommend selecting and registering a priority colour version (or several). Then in case of disputes you will not have problems proving the use of your designations, and you do not risk losing your exclusive rights.