Choosing the Color Scheme of a Trademark

According to paragraph 2 of Article 1482 of the Civil Code of the Russian Federation, "A trademark can be registered in any color or color combination". This approach allows the applicant to come up with an original version of the trademark.

As follows from paragraph 1 of Article 1482 of the Civil Code of the Russian Federation, "Verbal, figurative, three-dimensional and other designations or their combinations may be registered as trademarks". The most frequently registered are verbal, combined and figurative trademarks, among which it is advisable to consider the issue of choosing a color design using the example of a combined and figurative mark.

A combined trademark is a designation consisting of a verbal and a figurative element. If a trademark is made in a colored font, but there are no figurative elements in it, it is considered to be combined, since the color of the font is an additional distinguishing characteristic of the mark.

A figurative trademark does not contain verbal elements, that is, it represents a figurative element or a composition of figurative elements.

When choosing a designation for registration and further use, the applicant often asks the following questions, which we will try to answer in this article:

• Will all color combinations be protected if the application is filed for a black and white designation?
• Which color combination is better to register first?
• Is it possible to specify in the application simultaneously identical verbal elements in Cyrillic and Latin alphabets (transliteration)?
• Will the examination refuse registration to third parties who have filed an application for an identical/confusingly similar designation in the same classes, but in a different color?
• Is it necessary to register an updated version of the mark if there was a rebranding after a while?

First and foremost, we always recommend registering the trademark in the exact way it is used or intended to be used. This recommendation is based on the fact that, under Article 1486 of the Civil Code of the Russian Federation, after three years from the date of registration, interested third parties may attempt to annul the trademark in court due to non-use. In such cases, the trademark owner must provide evidence that the trademark has been used in the exact form in which it was registered.

However, the following should be taken into account:

According to Paragraph 164 of the Plenary Resolution of the Supreme Court of the Russian Federation No. 10 of April 23, 2019, regarding the application of Part Four of the Civil Code, the use of a trademark, for the purposes of Article 1486 of the Civil Code, includes its use with modifications to certain elements, provided that these modifications do not alter the essence of the trademark or limit the protection granted to it.

When using a designation registered as a trademark with a change in individual elements, the court must assess the presence or absence of similarity between the trademark and the designation used, the perception by consumers of the designation used as the same trademark, as well as the impact of changes on the essence of the trademark as a result of such use.

The question of whether the changes made by the right holder affected the essence of the disputed trademark - whether it remained recognizable (distinguishable) for ordinary consumers of the relevant product - is a matter of fact, which is established by the court based on the results of a comprehensive analysis of the registered and used designation.

Will all color combinations be protected if the application is filed for a black and white designation?

Unfortunately, no. Registering a trademark in black-and-white does not automatically protect all possible colors. If you intend to use your designation in multiple color combinations—for example, on packaging, in advertisements, on signage, in documents, or on the Internet — it is advisable to register all the relevant color variations. Of course, submitting multiple applications will increase the cost of the process. However, successful registration ensures comprehensive protection of your trademark, and the use of all registered color versions is legally justified.

Which color combination is better to register first?

There are situations when, at the initial stage, there is no understanding of how smoothly the registration procedure will go, and therefore it is excessive to spend money on submitting a large number of applications. In such a situation, it is possible to file one application, choosing the priority, most used version of the mark, and see what the result of the examination will be. If the first version of the mark is successfully registered, you can think about filing additional applications in other colors.

Is it possible to indicate in the application both identical verbal elements in Cyrillic and Latin alphabets (transliteration)?

This question applies to such signs that contain verbal elements, for example, in a similar version of "". Rospatent does not give a direct ban on the registration of such marks. Many applicants, wishing to save financial resources, submit such applications. However, they do not take into account the issue of further use of such a mark. The situation when the sign will be used in such a double combination is most likely very rare. For such a mark, evidence of use must be presented exactly in the form in which it is registered, but usually the use occurs in Latin and Cyrillic separately.

Will the examination refuse registration to third parties who have filed an application for an identical/confusingly similar designation in the same classes, but in a different color?

In the course of the examination of pictorial designations, the following are evaluated and compared: external form; presence or absence of symmetry; semantic meaning; type and nature of images (naturalistic, stylized, caricature, etc.); combination of colors and tones, i.e. when comparing figurative and three-dimensional designations, similarity can be established, for example, if in these designations coincides some element that significantly affects the overall impression, or if the designations have the same or similar outlines, compositional structure, or if they depict the same thing in a similar way, in connection with which they are associated with each other.

Combined designations are compared with combined designations, as well as with those types of designations that are part of the combined designation being checked as elements. To determine the similarity, the compared designations should be considered as a whole. First of all, it is necessary to assess the general visual impression of the compared designations. Then, it is necessary to establish the role of similar elements of the compared designations, taking into account their location in the designation, that is, whether similar elements are dominant, whether they occupy a central place in the overall composition of the designation. When studying the significance of a particular element of a combined designation, it is necessary to take into account its visual dominance, which can be caused both by the larger size of the element and by its more convenient location in the composition (for example, the element may occupy a central place from which the inspection of the designation begins).

Given that color is an auxiliary characteristic of the sign, performing an accent function, it is impossible to say unequivocally that only color can act as a criterion of similarity. If the combined designation is completely or practically identical (identical) to the registered mark, but differs only in color, the examination must oppose the earlier trademark under Clause 6 of Article 1483 of the Civil Code of the Russian Federation.

However, the situation with a figurative mark may be somewhat different. For example, there is a figurative trademark "" according to the form No300966 in the color combination – black and yellow. If a third party files an application for a designation, but in other colors, for example, red and black, it may be problematic to prove the similarity with the mark according to the certificate No300966, because the marks will produce a different general visual impression.

Thus, when assessing similarity, it is important to take into account both individual elements (verbal, pictorial elements) and the overall visual impression, while assessing similarity is a subjective process.

Is it necessary to register an updated version of the mark if there was a rebranding after a while?

Yes, we recommend that you register updated versions of the marks if the usage has changed. Before filing an application for an updated mark, searches should be carried out to check whether any new confusingly similar marks/applications have appeared since the registration of the early mark in the classes of interest. Even if there is an early mark, this risk cannot be ruled out, since the examination is subjective. If there are no obstacles to the registration of the renewed mark, then you can file an application. The presence of an early sign with an identical verbal or graphic element will be an additional advantage. In this case, the applicant for the new application must be the same person who is the owner of the trademark. In addition, we note that we do not recommend refusing to renew an early mark with an identical verbal or graphic element that is no longer used, since it cannot be ruled out that it will be necessary to confirm the priority of the mark, in which case the earliest mark will be an advantage.

Thus, color for a combined and figurative trademark is an important element. It is necessary to register the mark as it is used, planned to be used, in order to be able to prove the use if necessary and to leave the mark in force.