Trademark is an intellectual property protected by law. According to Article 72 Vietnam Intellectual Property Law 2005, amended and supplemented in 2009, 2019, a mark is protected when it satisfies two conditions:
(1) Being a visible sign in the form of letters, words, drawings or images, including holograms, or a combination thereof, represented in one or more colours;
(2) Being distinguishable.
Therefore, colour is one of the elements that define and contribute significantly to a trademark’s distinctiveness. The colours used in a mark, therefore, must be included in the Trademark Registration in order to be protected.
II. Scope of protection in the case of black-and-white trademarks and that of coloured trademarks
The ground for trademark protection is the Certificate of Registered Mark. Thus, the scope of protection of a trademark will be determined by the sample of trademark enclosed in the Certificate of Registered Mark. In the case of black-and-white trademark, colours other than black and white would not be protected as part of a trademark.
However, it does not necessarily be implied that the mark owners are banned from using other colours in their black-and-white trademark. As stipulated in point 2 clause c Article 5 Paris Convention for the Protection of Industrial Property, the use of a trademark by the proprietor in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered shall not entail invalidation of the registration nor diminish the protection granted to the mark. The owners are able to use other colours in their black-and-white trademark as they do not alter the distinctive character of the mark. Nonetheless, such use may lead to several possible legal problems relating to trademark protection namely, (i) violation of other proprietor’s trademark; (ii) in case other people using identical or confusingly similar trademark with different colours, those colours would not be deemed as violating elements.
In order for coloured trademarks to be protected, the mark owners must include the colours in their registration form. Then, the registered colours are included in the mark’s protection scope. Therefore, the scope of protection in this case is broader and more efficient in minimizing the risk of trademark infringement.
However, although the protection scope of a colored mark is broader than that of a black-and-white mark, when registering a colored mark, the colors in the Trademark Registration Certificate constitute the “distinguishing characteristic of the mark” provided for in Article 5 of the Paris Convention. Therefore, the owners will not have the flexibility to use other colors for their trademark as for black and white trademarks.
To save time learning about the law, filling out forms, and submitting documents, you can contact HTLaw for consultation and legal services related to trademark registration.
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