China : Distinctions between registration of black and white trademark, and colour trademark

11.28.2019

Distinctions between registration of black and white trademark, and colour trademark

Many companies add colours to the design when registering trademark. Companies which make trademark application for the first time may be even more concerned about the problem with the colouring of trademark. “What colour should we use for the trademark?” I, as the editor, feel their anxiety when they are struggling with the problem of colouring of the trademark. Today, let’s talk about the issue – whether it is necessary to register colour trademark? Those who are still struggling with the choice of colours of your trademark should read and find a solution to your headache.

Currently, most of the trademarks in use in the market are coloured. Therefore, many companies want to register colour trademark. However, there are some limitations on the use of colour trademark.

Article 49 of the Trademark Law provides that: If a registrant alters the registered trademark on its own, the local Department for the Administration of Industry and Commerce shall order rectification within a specified time period; and if no rectification is made within the specified time period, the Trademark Office shall cancel the registered trademark.

“alter the registered trademark” shall include alteration of the colour of the registered trademark. In other words, the colour of the trademark in use must be the same as that of the registered trademark. If we submit a coloured trademark for registration, the trademark to be used in the future must have the same colour you registered. Or else, it falls into the situation “alter the registered trademark on its own”. And hence, it may face the risk of cancellation of the registered trademark.

If you really want to change the colour of the trademark, you can only do it by resubmitting the trademark application. That is why I suggest all of you submit a black and white trademark application as black and white trademark does not indicate the specific colour of the trademark. Since there is no restriction on colour, the company can choose any colour combination as it wishes. It makes black and white tradmarks more flexible than coloured trademarks. Companies may add colour to the black and white trademarks at later stage for promotional purpose according to different needs. It makes the trademark more fit with the context.

So, is black and white trademark always better than colour trademark? No! Not all trademarks are fit for black and white trademark registration. See below for situations where it is more suitable to register coloured trademark!

Needs of products: with colours, we can make products, such as paint and colour painting, more vivid. Therefore, registration of coloured trademark is suggested.

Influential signs or figures: the yellow “M” sign of McDonald’s is an integral part of the trademark and no other colours can be used for promotion. Then, the company may consider registering it as a coloured trademark.

Of course, if you have special preference for a specific colour and you are sure that that colour will be used for a long period of time. You may register a coloured trademark with that specific colour in order to gain protection for that colour in the trademark.

In conclusion, when registering trademarks, companies should consider its future development before choosing to register black and white trademark or coloured trademark. Coloured trademark increases its distinctiveness, while black and white trademark covers all colours, and fits the changing needs of consumers.