Trademark Application with logo in Color? or Black and White? Should I register each color variation?

Should all color variations of a logo be registered as a trademark?

If I want to use my logo in many different color variations, which colors should I file a trademark application for? It’s a brand logo for an apparel company and the logo will be printed on clothes with various colors. Do I need to register all the variations…

When it comes to logo prints on clothing, there seem to be a lot of color variations. Actually, it is not necessarily necessary to register a trademark for a logo in different colors.

When a logo is used in different colors, many people wonder whether all variations should be registered or which color should be registered.
It is generally okay to apply for and register one main trademark. This page explains in detail.

Treatment of trademarks with different colors

Many people seem to think that a trademark with a different color must be registered separately.
However, in the actual use of a registered trademark, the trademark may be used in different colors, and it is not realistic to have to obtain a registration for each trademark with a different color.
Therefore, Japanese Trademark Law has a special provision that “a trademark of a different color that meets certain requirements shall be treated as the same trademark as the registered trademark”.

Requirements for a trademark of a different color to be treated as identical to a registered trademark

A trademark of a different color that meets the following requirements is treated as identical to a registered trademark.

The term “registered trademark” shall include a trademark similar to the registered trademark that would be considered identical to the registered trademark if the colors were the same as those of the registered trademark. (Article 70(1))

In other words, if a trademark is both (1) similar to a registered trademark, and (2) if the colors are identical, identical to a registered trademark, even if the color is different, the trademark right is valid for the trademark with the different color.

Conversely, if someone else uses a differently colored logo, you can sue for trademark infringement. If someone else is using your registered trademark in a different color, you should take measures to stop them from using it or claim compensation for damages.

Principles for applying for a logo trademark in a different color

As mentioned above, registered trademark rights extend to trademarks of different colors, so you can protect your rights to a trademark of a different color by registering one of them.
As a general rule at the time of filing, we recommend that you apply for a trademark in the most frequently used color or grayscale (black and white).
If you have not yet decided which color you will actually use, it is better to file in grayscale.

Good! So if I want to use the same logo, just a different color, I can file and register any one trademark of them!

Caution: If the requirements are not acceptable

A very simple graphic that focuses on color characteristics may not be considered a “trademark in a different color from the registered trademark”.
In the case of such a logo trademark, since the color part is considered to be a self-identifier, you should apply for the trademark in color, and if there are color variations, you should consider registering each of them as a trademark.

If the trademark consists only of colors, it is also recommended to aim for registration under “a trademark which consists solely of colors”.

Summary

In principle, if a trademark application is filed and registered in either the most commonly used color or in black and white, it is unlikely that there will be a problem with the use of a trademark in a different color.
However, whether or not a trademark in a different color meets the requirements to be treated as the same trademark as the registered trademark depends on the trademark and the manner in which it is used.
Please feel free to contact us if you have any questions about applying for or using a trademark in a different color, or if you have any questions about infringement due to the use of a trademark in a different color by another party. Our trademark attorneys are available to assist you.