As more brand owners focus on visual identity through color, one question often comes up:
“Should we file our trademark in color or in black-and-white in Thailand?”
While color can make a brand more recognizable, there are important legal points under Thai trademark law that brand owners should understand before deciding.
Filing in Black-and-White Provides Broader Protection
In Thailand, a trademark filed in black-and-white is generally understood to cover all color variations. This means greater flexibility in enforcement. For example, if someone uses a similar mark in a different color, the black-and-white registration still offers legal grounds for action.
This interpretation is consistent with Section 45 of the Thai Trademark Act, which states that a registered trademark shall be protected as registered unless its protection is specifically restricted. In other words, if the registration does not mention any color limitation, the law assumes that protection extends across all color versions of the mark.
Filing in Color May Limit Your Rights
When a trademark is filed in color, the legal protection typically applies only to that exact color presentation. This approach is derived from the interpretation of Section 45 of the Thai Trademark Act, as the law does not explicitly provide for the protection of a trademark in color. This means that if a third party uses the same mark design but in different colors, it may fall outside the scope of infringement.
Registering a Combination of Colors Is Legally Allowed, But Often Challenging
Under Thai trademark law, there is a legal basis for registering a color trademark in the form of a combination of colors. Specifically, Section 7 paragraph 2 (5) of the Thai Trademark Act allows applicants to register a combination of colors represented in a special manner, such as in stripes, patterns, or a distinct color arrangement, if it can be shown that the combination has acquired distinctiveness.
However, in practice, applications for a combination of colors are rarely filed in Thailand. Many brand owners who seek to register a mark that includes color tend to proceed with a standard color filing, without identifying it as a combination of colors under the law. Even when such combination-of-color applications are submitted, they are often rejected by the Registrar. This is because color arrangements are frequently viewed as ordinary or decorative
In Thailand, we have found a Supreme Court decision that addresses the registration of a combination of colors as a trademark. Specifically, the ruling in Shell Brands International AG v. Department of Intellectual Property (Decision No. 2183–2184/2553) sheds light on this issue. The case illustrates that although registration of a group of colors is legally allowed, the process is complicated and can take a long time to succeed.
In this case, Shell submitted a mark featuring a specific arrangement of red, yellow, and grey for use with oil products. The Registrar and the Trademark Board rejected the application, citing lack of distinctiveness. The applicant appealed to the Central Intellectual Property and International Trade Court (IP&IT Court), which approved the registration. The Supreme Court upheld that decision, reasoning that the color arrangement was clearly intentional and helped consumers recognize the source of the product. This made the mark distinctive enough to qualify for registration.
This ruling confirms that while it is possible to register a group of colors, it is far from easy. The color design must be more than decorative and must not resemble layouts the public sees regularly. Only when the color scheme has a unique arrangement and acts as a true source identifier will it stand a chance of being accepted. The case also serves as a valuable guide for future applicants in drafting color descriptions that clarify how each element contributes to the overall distinctiveness of the mark.
Key Takeaways for Brand Owners
When choosing between filing a trademark in black-and-white or in color, brand owners should first consider how important color is to the brand’s identity. If the mark is recognizable without color, filing in black-and-white is usually the safer and more flexible option. This type of filing generally provides broader legal protection and simplifies the enforcement process.
However, if color plays a central role in how consumers recognize the brand and has been used consistently in marketing, a color filing may be appropriate. Still, it is important to understand that color-specific protection is narrower and applies only to the exact color presentation filed.
For those considering registering a combination of colors, such as a specific arrangement or pattern, extra caution is needed. In Thailand, there are currently very few legal precedents for this type of trademark, and the Registrar may not yet have a clear and consistent standard for assessing such applications. This means the process may be more complex, and there is a higher chance of refusal if the color scheme is not seen as distinctive enough. Nonetheless, if the color combination clearly stands out and helps consumers identify the brand, filing for a combination of colors may still be a valid option.
Ultimately, the right filing strategy depends on a realistic evaluation of how color functions in your brand and how strongly it contributes to consumer recognition.
BLACK & WHITE VS. COLOUR TRADEMARKS – full report
Author
Rachadawan Kelar
Managing Partner
Email: rachadawan.k@rwtlaw.co.th
Mobile: +66 91 946 1456