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Treatment of use of different colors under Hong Kong Trademark Law

Picture of 弁理士 杉浦健文

Treatment of colors and legal framework when registering trademarks

Under the Hong Kong trademark system, it is possible to apply for and register a trademark with a particular color or without specifying any color. If a color is not claimed (designated) at the time of application, the color will not be considered a characteristic for trademark registration purposes, and the color will not be considered in determining distinctiveness during examination. In other words, a trademark registered inblack and white is not limited to a specific color, so in principle it can be used in any color in actual use.

On the other hand, if a specific color is claimed as a component of a trademark (e.g., "red and yellow are claimed as components of this trademark"), that color will be considered for registration as an important distinguishing feature of the trademark. Therefore, if a trademark specifies a color at the time of registration, using a color different from the registered color may be problematic as changing the usage of the trademark. However, the Hong Kong Trademark Ordinance (Cap.559) has provisions that allowsome variations in the use of registered trademarks. Specifically, Article 52 of the Ordinance clearly states that ``Use in a form that includes a difference that does not impair distinctiveness compared to the registered form'' is also included in ``use.'' Under this provision, even if a trademark is used in a color different from the color at the time of registration, as long as the change does not impair the distinctiveness (characteristic impression) of the trademark, it may be legally recognized as a "use."

“Genuine use” and color difference in non-use cancellation trial

In Hong Kong, if a registered trademark has not been authentically used for three consecutive years or more, there is a risk that a third party will request cancellation of non-use (cancellation of registration) (Article 52(2)(a) of the Trademarks Ordinance). In order to qualify as ``genuine use,'' the actual use of the trademark must beessentially the same asthe registered trademark. However, as mentioned above, slight changes in appearance are permitted under Hong Kong law, and pursuant to Article 52, Paragraph 3 (a) of the Ordinance, if a product is "used in a form different from the registered form within the range of not changing the essential parts," this is also recognized as a record of use.

As for color differences, uses that differ only in color can usually fall under this "difference in elements that do not impair distinctiveness". If the main distinguishing element of a trademark is the shape and arrangement of figures and characters, and the color itself does not have a decisive meaning in identifying the source of the product, it will be determined that the trademark's identity (the core of its distinctiveness) is maintained even if it is used in a different color than at the time of registration. Therefore, for example, even if a logo registered in a particular color is used in black (monochrome), as long as the shape of the logo and the shape of the letters are the same, the difference in color does not essentially change the distinctiveness, and there is a high possibility that the use will be recognized as genuine. In fact, the examination practice of the Hong Kong Intellectual Property Office (Intellectual Property Office) states that ``a trademark registered in black and white may be used in color,'' and it is understood that the opposite case (color registration/black and white use) can be considered in the same way.What is important is whether the change (different color) affects the distinctiveness of the trademark. If an element other than color (letters or shapes) is the main feature, discrimination will likely be maintained even if the color is changed.

Example of using different colors in opposition/dispute

Differences in color between the registered trademark and the actual usage may also become an issue in trademark oppositions and disputes (infringement lawsuits, etc.). In the FAQ published by the Hong Kong Intellectual Property Office, there is a question as to whether it is possible to object to a later trademark if the earlier trademark registered in black and white is used in color, and the answer is as follows: "Even if the prior trademark is registered in black and white, the right holder may use it in color. The success or failure of the opposition will depend on the comparison between the prior trademark (registered form or form of use) and the subsequent trademark. If the claim is based on the history of use of the prior trademark, evidence of its use should be submitted." This answer also shows that different colors in use itself is unlikely to preclude a claim of prior right. The point is that if you can prove the form in which it was actually used, even if the color is different, it will be considered as evidence of use of the prior trademark.

Some court cases in Hong Kong also touch on the issue of color. For example, in a trademark case at the Hong Kong Court of Final Appeal (CFA), a company registered a black-and-white version and a color version of the same trademark as a series trademark (a system that allows multiple similar aspects to be registered in one application). The Court of Final Appeal held that ``For trademarks registered in a series, if only the color differs, the color is a non-distinctive element and does not substantially affect the identity of the trademark.'' In other words, the black and white version and the color version are recognized as a series because the difference in color does not significantly change the distinctiveness of the trademark. This case law also shows that different colors are, in principle, considered to be minor changes that do not impair the identity of the trademark. However, the court also suggested that if a trademark owner wants to claim that color is a unique distinguishing feature, they should not simply register a series of black, white, and color. If colors are registered as a series, the colors are considered to be unimportant for identification purposes, so care must be taken if, for example, a particular color is the essence of a brand.

Notes on using different colors

Based on the above, we have summarized the points to keep in mind when using a registered trademark color in Hong Kong in a different manner.

  • Impact of color on distinctiveness: Consider what the trademark's primary distinctiveness comes from. If the shape of the figure or letter itself has strong discriminative power and the color is merely a decorative element, changing the color will have little effect on discriminative power and will likely be recognized as a track record of use. On the other hand, if the color itself is central to a brand's image (e.g., a color-specific logo of a well-known company), changing that color can change its distinctiveness. In such cases, it is recommended toregister the series trademarkin multiple color versions from the beginning as a safety measure.

  • Consistency in usage and degree of change: It is desirable that the use of a trademark be as faithful as possible to its registered form. In addition to color, if you make major changes to fonts or details of figures, there is an increased risk that the trademark will be considered a different trademark than the registered trademark. Hong Kong law allows minor changes such as a different color, but changes that are important for identification, such as rearranging the logo or adding additional elements, are not permitted. Even if only the color is changed, you can reduce future risks by registering a black and white version and a color version if possible.

  • Evidence Preparation: Actual use evidence is extremely important when defending a non-use revocation or challenging another company. In a non-use cancellation trial, it is necessary to prove three years of commercial use. Even if the trademark is used in different colors, it is required to collect sufficient examples of use (photos, advertising materials, transaction records, etc.) and show that the main features of the trademark (e.g. the shape of the logo) are the same as the registered trademark. It is a good idea to prepare such evidence in case the other party requests proof of use in the case of an appeal.

From the above, In Hong Kong, even if a trademark is used in a color different from that of the registered trademark, it is likely to be recognized as "use" as long as it does not affect the distinctiveness of the trademark. The provisions of the Ordinance and its practical treatment also support this soft stance. However, care needs to be taken when the important feature of the trademark is color itself, and if necessary, protection through series trademarks or additional applications should be considered. For example, if you plan to use the trademark exclusively in black, it is advisable to obtain registration in monochrome from the beginning (as a trademark registered in black and white can cover use in all colors). Overall, it is important to carefully consider the impact of color differences on the trademark's identity and take all possible precautions to maintain rights.

References/Sources: Hong Kong Trademark Ordinance (Cap.559), Hong Kong Intellectual Property Office "Trademark Ordinance Q&A", Hong Kong Intellectual Property Office Trademark Examination Work Manual "Color Trademarks", Hong Kong Court of Final Appeal judgment commentary (Hogan Lovells), Benny Kong & Tsai Law Office commentary.