Registering Black and White Trademark

What You Need to Know About Registering Black and White Trademark in Indonesia

Trademark registration is a critical process for brand owners, providing legal protection for their distinctive brands, logos, names, and slogans. While registering a trademark in colour is common, some brand owners opt for registering their trademark in black and white. 

First, let us consider the reasons or benefits why brand owners choose to register their trademarks in black and white. And then, we will learn if the same applies to the Indonesian trademark law and practice for registering black-and-white trademarks.

Why Registering Black and White Trademark?

Registering black and white trademark can give brand owners a number of advantages, which are among others:

Broad Protection

One of the primary reasons or benefits of registering a trademark in black and white is that it provides broad protection for the trademark.

Cost Savings

Registering a trademark in colour requires a specific colour scheme to be provided. This means that if the brand owner decides to use a different colour scheme in the future, they would need to file a new trademark application. This can be costly and time-consuming. By registering a trademark in black and white, the brand owner can avoid the need to provide a colour scheme, saving both time and money.

Versatility

Registering a trademark in black and white also provides versatility in terms of branding. A black-and-white trademark can be used on any colour background or in any marketing material, without the need to match a specific colour scheme. This flexibility allows the brand owner to adapt their branding to different situations and platforms without the risk of infringing their trademark.

Time-Saving

Some brand owners need to have their trademarks filed and registered as soon as possible and don’t have much time to prepare for the actual representation of their trademarks. Once they have a very good idea about their trademark, even if it is only a simple wordmark or if they already have a logo but have not been sure about the colour they are going to use, they need to file it as soon as possible to claim the earliest possible filing date of their trademark. Filing their trademark in black and white could be a workable solution at hand. 

Registering a trademark in black and white can provide broad protection, cost savings, versatility, and time savings. While registering in colour can be effective for certain brands, registering in black and white provides benefits that cannot be overlooked. Ultimately, the decision of how to register a trademark should be made based on the brand owner’s unique needs and goals.

Now that we know some of the reasons or benefits for brand owners to register their trademarks in black and white in many parts of the world, we will need to ask if such reasons or benefits are also in line with Indonesian Law and Practice.

Does black and white trademark registration protect all colours in Indonesia?

Law No. 20/2016 on Trademarks and Geographical Indications does not explicitly regulate the protection of a black-and-white trademark in all colours.

However, Article 21 paragraph (1) letter (a) of Law No. 20/2016 on Trademarks and Geographical Indicationsstipulates that a trademark application is to be rejected if the trademark has similarities in principle or in whole with a registered trademark belonging to another party or a trademark that has been applied for previously by another party for the same kind of goods and/or services.

The similarities could be in the form of visual and/or phonetical, and/or semantical similarities.

Visual similarity may include using similar words, typography, styles, logo or other graphic elements, and colours. Similarity means that it doesn’t have to be identical or exactly the same. A first impression of visual closeness would be sufficient to show that similarity exists.

Although colour is an important element in creating a distinctive trademark for some brands, sometimes the use of any variation of colours or even black and white will not suffice to differentiate a trademark from the other. 

Registering Black and White Trademark

From the above examples, despite the differences found in those four trademarks including the use of different paintings and colours, we can say that they are basically similar and if they are not from the same owner (which is not so in this case), those marks would be in conflict with one another.

So, if a trademark is registered in black-and-white in Indonesia, said trademark still has the “power” to prevent essentially similar trademarks in colour from being registered in Indonesia. This implies that registering a black-and-white trademark in Indonesia would also give broader protection for the trademark.

Yes. Based on article 100 paragraph (2) of Law No. 20/2016 concerning Trademarks and Geographical Indications, whoever unlawfully uses a trademark which has similarities in principle with a registered mark belonging to another party for the same kinds of goods and/or services produced and/or traded shall be punished with imprisonment for a maximum of 4 (four) years and/or a maximum fine of IDR 2,000,000,000.- (two billion rupiahs).

If you are the owner of a black-and-white trademark registration in Indonesia, you may still have a good chance of success in filing a legal action against infringement of your trademark which is used in different versions of colours but still gives the immediate impression of similarities with your trademark.

What is the difference between registering a trademark in black and white and in colour?

There is no difference between registering a trademark in black and white and in colour.  As long as similarities with the existing trademark applications/registration are found, the new similar trademark application will be rejected by the Trademark Office.

However, in terms of law enforcement, colour trademark registration which is in accordance with actual use will get maximum protection from infringement with a prison sentence of 5 years. This is pursuant to Article 100 paragraph (1) of Law No. 20/2016 concerning Trademarks and Geographical Indications, which reads as follows:

(1) Whoever unlawfully uses a trademark that is entirely the same as a registered trademark belonging to another party for the same kinds of goods and/or services produced and/or traded, shall be punished with imprisonment for a maximum of 5 (five) years and/or a maximum fine of IDR 2,000,000,000.- (two billion rupiahs).

In many cases, trademark owners first file their trademarks in black and white because they haven’t actually used the trademarks on their goods/services but they need to have their trademark filed and registered as soon as possible. Once they have begun using their trademarks, they may eventually be using different versions of their trademarks from the earlier black-and-white version.

This is the time when re-filing of the new version of their trademarks is highly recommended to achieve maximum protection for their trademark registration.

A trademark must be used in accordance with registration including the use of words, typography, styles, logo or other graphic elements, and colours. If there are changes in the actual use, the new version of the trademark must be immediately re-filed for registration.

If the new version according to the actual use is not registered, in terms of law enforcement, the sentence for infringement is not optimal (weak), with only 4 years of imprisonment.

Takeaways

Filing a black-and-white trademark application is common practice these days for some brand owners because it gives the benefits of providing broad protection, cost savings, versatility, and time savings.

Although trademark law in Indonesia does not explicitly regulate the broader protection of a black-and-white trademark in all colours, some provisions in Law No. 20/2016 concerning Trademarks and Geographical Indications, imply the protection against the registration and use of a trademark having similarity in principle or in whole with the existing trademark registrations.  

The re-filing of a black-and-white trademark in the new version of colour or form according to its actual use in Indonesia is highly recommended to maximise the protection of the trademark according to its actual use.

Photo by Tareq Shuvo on Unsplash





(for illustration only, unrelated to the article’s content)

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