Head of Trademark Department / Trademark Attorney Reg. № 1258 / Patent Attorney of the Russian Federation / Eurasian Patent Attorney Reg. № 63
IP Court reviewed the case of changing the color combination of a trademark
Each trademark owner has the opportunity to make changes to his mark, however, such changes must comply with the requirements of Art. 1505 of the Civil Code of the Russian Federation, namely, they must refer to individual elements of the trademark without changing its essence.
According to a case N SIP-839/2022, Rospatent received an application from the owner of the trademark "AMD" (N 754324) to change the color combination of the trademark from the combination: dark yellow, blue, white to the combination: yellow, blue, white.
The administrative body sent a notice of refusal to satisfy the application, motivated by the fact that the change being made changes the visual perception of the registered trademark as a whole.
The right holder decided to challenge this refusal in the IP Court, motivating his claims by the fact that the change to the trademark is not significant. In his opinion, this change does not affect the designation itself, but only applies to the text indication of one of the colors: "dark yellow" must be changed to "yellow", and such edits cannot be recognized as changing the perception of the sign as a whole.
According to Rospatent, changing the description of the trademark, namely the indication of yellow instead of dark yellow, will significantly change the scope of legal protection of the trademark, since yellow includes all shades of yellow, including dark yellow, light yellow, and others.
IP Court, analyzing the degree of significance of the changes introduced, indicated that it is only supposed to change the tone within one of the colors of the trademark. After evaluating the overall impression that the trademark and its modified version produce, the court noted that the change does not lead to a significant change in the perception of the trademark.
At the same time, the IP Court agreed with Rospatent that the indication of the color combination given in the State Register, along with the image of the trademark and the list of goods and services, also constitutes the scope of legal protection of the trademark, but in this case, it does not matter due to the insignificance of the transformation of the mark.
The court took into account that the applicant also owns the trademark “AMD” N 433412, which has been granted legal protection for the combination of colors: yellow, blue, white. That is, this color combination is already known to the consumer, and therefore the changed color combination for the disputed trademark N 754324 is obvious will not lead to a significant change in the perception of the trademark as a whole.
As a result, Rospatent's notification of refusal was declared invalid, since in this case only the tone of one of the colors used in the reproduction of the mark is changed, which cannot be considered a significant change in the scope of legal protection.
In summary, it should be noted that Rospatent has a very strict approach to making changes to both registered trademarks and declared designations, while the above practice softens it. This example of court practice can help the applicant when making changes to a trademark, if he has such a need.