Handling of the use of colored trademarks and the use of different colors in Taiwan

This judgment of "identity" is made on a case-by-case basis, and the key point is whether the trademark's main distinguishing features (the essential elements that support distinctiveness) have not changed. For example, even if you change the font or adjust the size or aspect ratio of a word trademark, if the character string itself remains the same, the sameness will be maintained. Also, for logo marks, slight changes in color scheme and details may be acceptable as long as the basic structure of the design remains the same. On the other hand, if the main parts of the trademark are omitted or significantly modified, the identity will naturally be lost and the trademark will not be considered a registered trademark. Therefore, it is practically important for trademark owners to maintain as much identity as possible between registered trademarks and actually used trademarks.

Registration of colored logo trademark and use in different colors

If a logo trademark is registered in color but is actually used in a different color, such as solid black, special care must be taken in determining identity. According to the guidelines of the Taiwan Intellectual Property Office (TIPO), If a trademark is used in a color different from the color in which it was registered, whether or not the used trademark is identical to the registered trademark will be determined on a case-by-case basis. Specifically, the following principles are stated:

Furthermore, Taiwan also has a system for "color trademarks" (trademarks consisting only of colors themselves or combinations of colors). In the case of color trademarks, the specific color arrangement itself is the content of the right, so in principle, it is not allowed to change the registered color and use it. For example, if a two-color stripe placed in a specific position on a product packaging is registered as a color trademark, changing the color will result in a completely different sign, and the identity will be lost. In this way, it is unacceptable to change thecolor for trademarks whose essence is thecolor itself, but inthis time's theme, ``colored logo trademarks'' (shapes or text + color), in practice, they are carefully judged based on how much a change in color will affect the brand's distinctiveness.

Practical risks of using different colors

If a colored trademark is registered but is actually used in a different color (e.g. solid black), the company faces practical risks such as:

• Risk of non-use cancellation (violation of duty to use): If you continue to use the trademark in a manner that is not identical to the registered trademark for more than three years after registration, there is a risk that a third party will request a non-use cancellation trial. In fact, it is extremely dangerous if the color is as registered and has never been used. When a request for cancellation is received, even if you submit a history of using the color black, it will be determined that ``it is not considered to be the use of a registered trademark (color),'' and you may lose your trademark rights. In Taiwanese practice, it has been pointed out thatif a trademark is registered in black and white, the use of color is recognized as use, but if a trademark registered in color is used in different colors, the risk of cancellation increases.

• Limited scope of trademark rights/disadvantages in enforcing rights: A trademark registered in color is interpreted as a right limited to the specific color for which it is registered. Therefore, if someone else uses a similar trademark in a different color, it may be unclear whether you can stop it under your rights. For example, even if your company registers a blue and green logo, and a third party uses a monochrome logo with the same shape, there is a risk that the logo will be claimed to be "dissimilar" because the colors are different.

• Risk of unexpected loss of rights (conflict with another's trademark): By using a trademark in a manner different from the registered trademark, there are cases in which the trademark becomes similar to another's previously registered trademark. In this regard, Article 63, Paragraph 1, Item 1 of the Taiwan Trademark Law stipulates that if a trademark right holder changes and uses a registered trademark, and as a result, the trademark is the same or similar to another's registered trademark and there is a risk of confusion, it is grounds for cancellation of the trademark. As an actual example, there was a case in Taiwan where a right holder registered the trademark "FLYANT and shape" (a logo containing an ant shape) in black, but when he actually used it, he changed the ant shape to red and changed some of the design, resulting in the trademark becoming very similar to a red ant trademark previously held by another company, leading to the cancellation of the trademark right. In this case, the inconsistency between the registered trademark and the used trademark created a conflict with the rights of a third party, resulting in the loss of one's own trademark rights.This was an instructive result. Therefore, If you use a trademark in a color different from the registered content, you should carefully considerthe risk of conflict with other companies' trademarks.

• Advantages of filing without color restrictions (black-and-white trademark): If you register a trademark in black and white (or a specific single color), any color displayed in actual use will in principle be recognized as ``use of the registered trademark, so you can flexibly respond to future design changes and multicolor development. For example, in the case of a brand strategy that changes the color of the logo depending on the season or medium, it will be less likely to affect the maintenance of rights. In addition, the scope of rights can be easily interpreted, which has the advantage of making it easier to deal with cases where others copy the product in a different color. In practice, it is said that ``If there is a possibility of changing the color in the future, it is recommended to apply for a black-and-white trademark, which has a wide range of rights and can be used flexibly.''

• Advantages of filing as a colored trademark: Depending on the design, adding color may improve its distinctiveness. In Taiwanese practice, it has been reported that black-and-white applications are more likely to be rejected if the shapes are simple and have weak distinctiveness, while applications in color tend to be more likely to be granted registration. In other words, even if the logo itself lacks originality, in cases where the brand image is formed by a combination of specific colors, filing an application using those colors has the advantage of increasing the possibility of registration. Additionally, if your company's brand colors are clearly defined and are recognized in the market, it is possible to strengthen countermeasures against counterfeit products by acquiring rights that include those colors. However, even in this case, you must be prepared to use the registered colors in actual use. There is no problem if your policy is to always use the same color for your logo to maintain your brand image, but if there is even the slightest possibility that you will change the color depending on the situation, you should carefully consider applying for a limited color.

• Consider filing multiple versions: If you have the budget or want to fully protect your brand, it may be effective to file and register both black and white and color versions of the same design. By securing a wide range of rights for the black and white version and also registering the color version, you can prevent third parties from registering that particular color. For example, the Coca-Cola Company is known for its logo with white text on a red background, but it also owns a black and white version of the logo. However, for small and medium-sized enterprises in general, it is necessary to consider cost-effectiveness, and a realistic strategy would be to register in black and white, which is highly versatile, and apply for color only if you really want to include the rights.

In summary, filing without color restrictions is advantageous from the viewpoint of flexibility and stability, but color filing may be appropriate depending on the trademark's distinctiveness and brand strategy. If your company's logo is unique enough to be easily identifiedeven if you change the color, there is no problem in filing a black and white application.On the other hand, if your brand image is established incolor, it may be worth filing in that color. The important thing is to make a decision at the time of application, taking into account the operation after registration.

Advice and reference information for practitioners

For those in charge of companies operating trademarks in Taiwan, Consistency between registered trademarks and actual usage is a point that is often overlooked. Although similar concepts exist in other countries such as Japan, particular caution is required in Taiwan as the risks of cancellation have been made clear.

Practical advice:

• Check the trademark description on the registration certificate: If you change or renew your brand logo after registration, be sure to check it against the registered trademark rights. If you are unsure whether the changes are minor, we recommend consulting with a Taiwanese expert.

• Consistency of evidence storage and use: Always accumulate evidence of trademark use (advertisements, packaging, transaction documents, etc.) and try to use it for each product or service in the same manner as the registered trademark as much as possible. In the unlikely event that a cancellation trial is requested, it is best to show the usage history of the registered trademark itself in order to avoid unnecessary disputes regarding identity.

• Maintaining color trademark registration: A trademark registered in color must continue to be used in the same color as registered. When considering a design change within your company, evaluate the impact on trademark rights and, if necessary, take action such as filing an additional trademark application with a new color. It is important to change the colors used first and then change the registration later (*In Taiwan, changes to trademarks after registration are not allowed and a new application is required), so it is important to acquire rights in a planned manner.

Finally, you can deepen your understanding by reading the explanations provided by the Taiwan Intellectual Property Bureau and Taiwanese intellectual property law firms as reference information. Notes regarding the use of trademarks are published on TIPO's official website, and a Japanese translated version is also available. In addition, a news article from Wisdom International Law Office provides a detailed explanation of the case law (the Vitality Hole-in-One case) where the trademark actually used is different from the registered trademark. The article explains that ``registered trademarks should be used to the extent that they are socially accepted as being the same'' and introduces cases where partial omission was judged to be a loss of identity, which can be helpful in practice.

For companies managing trademarks in Taiwan, color handling is an important matter that can be the life or death of rights. It is important to develop a consistent strategy from the time of trademark application to use and to flexibly and reliably protect your brand. Based on the points mentioned above, please make all possible preparations so that you can use your colored logo trademark with peace of mind.

References and information sources: Taiwan Wisdom and Property Bureau ``Notes on the use of registered trademarks'' (established in 2008, revised in 2012), JOU Patent Office Q&A, WPTO trademark process explanation, Wisdom Law Office News, etc.

AUTHOR

Takefumi SUGIURA （杉浦 健文）

EVORIX Intellectual Property Law Firm　Managing Patent Attorney

Supports clients across IT, manufacturing, startups, fashion, and medical industries, covering patent, trademark, design, and copyright filings through trials and infringement litigation. Specialized in IP strategy for AI, IoT, Web3, and FinTech. Member of the Japan Patent Attorneys Association (JPAA), Asian Patent Attorneys Association (APAA), and Japan Trademark Association (JTA).

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