Under Section 121.1 of the Intellectual Property (IP) Code of the Philippines (R.A. 8293), a “mark” is broadly defined as any visible sign capable of distinguishing the goods or services of an enterprise. However, under Section 123(l), it cannot be registered if it consists of color alone, unless defined by a given form.
When one registers a trademark, the scope of protection is also dictated heavily by whether a color claim is formally entered into the application. Under the Revised Rules and Regulations on Trademarks (MC No. 2023-001), the registrant may indicate colors as distinctive features of the mark by specifying the colors claimed, the names of the colors, and the principal parts of the mark to which each color applies.
Based on the latest schedule of trademark-related fees published by IPOPHL, a color claim—charged per class—is Php 280 for small entities and Php 600 for big entities.
Now, if no color is claimed, the mark is registered in black and white (B&W) without incurring additional fees. In Philippine jurisdiction, a black-and-white trademark is generally considered legally superior and strategically broader than a colored registration. The rationale is anchored on the principle of generic color protection.
When a mark is registered black-and-white without a restrictive color claim, the owner acquires the exclusive right to use that mark in any color or combination of colors. It grants a shield against subsequent third-party marks that might use identical or confusingly similar design layouts, regardless of the color palette the infringer adopts.
When assessing the likelihood of confusion via the Dominancy Test under Section 155.1 of the IP Code and as reaffirmed in recent jurisprudence such as in Kolin Electronics vs. Kolin Philippines International, G.R. No. 228165 (02-09-2021), courts give greater weight to dominant aural and visual impressions created by the marks in the public mind.
Because visual silhouettes, fonts, and graphical arrangements normally constitute the dominant structural core of marks, a black-and-white trademark registration protects these elements comprehensively. It prevents infringers from escaping liability through a mere change of color.
On the other hand, if a brand owner files a highly specific color claim (e.g., a precise shade of crimson red and navy blue), the scope of protection narrows. While it strengthens enforcement against an infringer utilizing that exact color scheme, it potentially weakens the owner’s position if a competitor copies the layout but uses entirely different hues, such as green and yellow. The competitor could argue that the overall commercial impression is distinct due to the strict color limitation outlined in the original registration.
Nevertheless, such a black-and-white superiority is not entirely absolute. Color claims can still become strategically vital under specific commercial conditions. For instance, a color scheme can transform an otherwise ordinary mark into a highly recognizable indicator of commercial source. Where the mark’s distinctiveness rests significantly on an unconventional color palette that has acquired secondary meaning, a color claim becomes legally essential.
When filing a trademark through IPOPHL eTMFile, color must be declared in one of two ways: if no color claim is made, the logo must be submitted in pure black and white; if a color claim is included, the applicant must tick the color option and clearly specify each color used and the exact parts of the logo where those colors appear.
For a general brand rollout in the Philippines, an experienced IP lawyer will routinely recommend securing a black-and-white trademark registration first to establish a broad defensive umbrella over the structural design. Once that foundational broad protection is secure, the owner can file supplemental applications claiming specific color iterations to safeguard the brand’s precise visual trade dress.
For legal consultations and inquiries regarding trademark and other intellectual property registrations and litigation in the Philippines, call us at (02) 8928-9535 (landline) or +639171940482 (mobile), or email info@duranschulze.com.
