According to official information from the Intellectual Property Office, trademark applications should generally be based on the actual usage pattern of the trademark. If the applied pattern is in black or a single color and the actual trademark is used in other colors without changing the main identification of the trademark, it can still be considered as a registered trademark in principle. However, if the applied pattern includes two or more colors and the applied colors are the main identification of the trademark, changing to other different colors in actual use may alter the consumer's recognition of the trademark, leading to loss of trademark identity and no longer being considered as a registered trademark. Therefore, it is recommended to apply for a trademark based on how it will actually be used.
What is trademark identity ?
Article 64 of the Trademark Act of Taiwan provides that:
If the trademark actually used by the trademark owner is different from the registered trademark, but it does not lose its identity in the general sense of society, it should be recognized as using its registered trademark.
For example, there was a case where the registered trademark "光泉" was in black, but in practice it was used in red.
Did the boss find web pages stating that applying for a trademark in black and white allows for changing colors ?
Our IP consultant, Manager Anna, had a conversation with Director Yu Hsien-tung of the Taichung Intellectual Property Office on February 4th this year, during which they discussed this issue. Director Yu believed that it was an arbitrary expansion of interpretation. During the conversation, he mentioned the most extreme case of cancellation (Registration No. 00807807) where the trademark application was registered in black and white but was actually used in color, and eventually, it was cancelled and established.
Case sharing:
★ Registration No. 00807807
★ Trademark Name: ARMATA DI MARE
★ Conclusion: Revoked due to lack of trademark identity (this is an extreme case)
Reason for revocation:
The trademark owner of the disputed trademark has applied various color combinations, such as yellow, blue, red, and white, to the simple black and white trademark design, indicating use on boots, shoes, socks, or their tags. Since these colors have become the main identifying features of the trademark, according to common social norms and consumer perception, the trademark's main identifying features have essentially been changed, and it is difficult to claim that they have the same identity. There is no evidence that the trademark owner has used the disputed trademark on any of the mentioned goods. Therefore, the disputed trademark falls under Article 63, Paragraph 1, Subparagraph 2 of the Trademark Act, and should be revoked according to the law.
Of course, the director also stated that most revocation cases are not as extreme as the above case, but in practice, it is still recommended that the boss apply for the trademark as they use it. If the boss is unsure how to use it, they can indeed submit a trademark application in black and white. The scope of "black and white" rights is relatively broad, but it should be noted that "covering more does not mean that it can be arbitrarily changed." In actual use, it should be based on the store sign and webpage. Consumers will only make purchases after seeing the store sign. The main color of the sign should be followed, rather than arbitrarily changing the color or shape for use.
Trademark protection includes color and font, and applying for a color trademark is more likely to establish trademark infringement, because whether infringement or similarity is determined depends on whether the other party's trademark is similar to ours. Generally, infringers will imitate even the color. Regarding the provisions of the pattern of trademark use under Article 5 of the Taiwan Trademark Act and the circumstances of trademark use under Article 63 of the same law, Jin Rui recommends that everyone should use the color of the registered trademark when using it, That is how to apply how to use, how to use how to apply ! This is to avoid the risk of revocation due to differences between the actual trademark style used and the registered trademark style obtained. For trademark matters, please contact "Trademark Experts" and submit a trademark application quickly!
