The State Office of Industrial Property of the Republic of North Macedonia (SOIP) has published a practice paper on the scope of protection of black and white marks, addressing different handlings of trademarks in black and white and/or greyscale as regards priority, relative grounds and genuine usе, which will effectively take place on 1 October 2022.
The practice paper provides a clear and comprehensive explanation of the principles on which the practice is based. It will be generally applied by the SOIP and the IP offices of the European Union Intellectual Property Network.
PRIORITY
A trade mark in black and white, from which priority is claimed is not identical to the same mark in colour, unless the differences in colour are insignificant. A trade mark in greyscale from which priority is claimed is not identical to the same mark in colour or in black and white, unless the differences in the colours or in the contrast of shades are insignificant.
A trade mark registered in black and white should only be considered identical to the same mark in greyscale if the differences in the contrast of shades are so insignificant that they may go unnoticed by an average consumer.
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.
RELATIVE GROUNDS
An earlier trade mark in black and white is not identical to the same mark in colour unless the differences in colour are insignificant. An earlier trade mark in greyscale is not identical to the same mark in colour, or in black and white, unless the differences in the colours or in the contrast of shades are insignificant.
The differences between a black and white and a coloured version of the same sign will normally be noticed by the average consumer. Only under exceptional circumstances, namely where these differences are so insignificant that they may go unnoticed by an average consumer, will the signs be considered identical.
GENUINE USE
A change only in colour does not alter the distinctive character of the trade mark, as long as the following requirements are met: a) the word/figurative elements coincide and are the main distinctive elements; b) the contrast of shades is respected; c) colour or combination of colours does not possess distinctive character in itself; and d) colour is not one of the main contributors to the overall distinctiveness of the mark.
For establishing genuine use, the principles applicable to trade marks in black and white also apply to greyscale trade marks.