It’s common practice for companies considering a complete re-brand to give some thought to updating their trade mark protection, particularly if they are moving from one name to something different entirely – take for example the high profile rebrand from TWITTER to X earlier this year. However, reviewing trade mark protection is also important even if a re-brand is more understated.
Imagine the scenario: You obtain registered trade mark protection for your logo in 2013. Since this time, your brand has developed but that development has been gradual. Each year, you make tweaks to your existing logo – year on year, the changes will be slight but over the course of time, your current logo has few similarities with the 2013 registered version and you have not re-filed.
By way of example, see the below (hypothetical) brand evolution. Each year, the logo update is nuanced, but when comparing the 2013 version with the latest version, there are few similarities.
It is understandable how companies that partake in organic brand development may put trade mark protection to the back of their mind, particularly when their branding is constantly revisited and refreshed. However, it is important to consider whether a variation in your mark warrants a new trade mark application or if your existing protection is sufficient to protect you for the use you currently make. It is well known in the IP world that it is important to make use of your trade mark in the form in which it is registered (or alternatively in a form that does not alter the distinctive character).
Not only does this practice allow registered proprietors to rely on their use to successfully defend non-use cancellation actions, it also allows them to rely on that use, if necessary, in opposition proceedings against third party applications. A recent General Court decision discussing this issue highlights the importance of ensuring trade mark protection is up to date and accurately reflects commercial use. In Sympatex Technologies (Sympatex), v Liwe Española (Liwe), Liwe were put to proof of use of their registration for the word mark “INSIDE.” covering a range of goods and services including clothing. Liwe filed evidence of a range of different marks, including the following:
When assessing whether Liwe had use of the registered word mark, the Opposition Division concluded that the evidence was sufficient to establish use of the word mark ‘INSIDE.’. On appeal, Sympatex argued that the evidence filed should not be considered genuine use on the basis that the mark had been used in ways which had altered the distinctive character of the registered mark. In support, they claimed that the way in which the mark had been used (most notably the use of the circle around the letters ‘IN’ and the absence of ‘.’) resulted in the mark effectively being viewed as two words – IN SIDE instead of INSIDE.
The General Court found in the favour of Liwe and notably did not think the distinctive character of the marks as used was any different to that of the registered mark. Although the case went in favour of the trade mark owner here, a number of points made by the general Court suggest that this may not always be the case. For example, the Court emphasised the importance of the letters all being in the same typeface, colour and font so that the mark would still be considered as being one word instead of two.
This case highlights that although some use in variant forms will be acceptable, there is a risk that the Court/Registry may consider use to be in a form which alters the distinctive character of a mark, and therefore not supporting the registration. There are no hard rules about what is considered to alter the distinctive character of a mark and cases are assessed on an individual basis. Having said this, it is generally accepted that some changes fall squarely into acceptable changes and others are much less likely to.
For example, using a mark registered in upper case in lower case is not likely to affect the distinctive character of the registered mark. On the other hand, adding a distinctive word element or an intertwined graphic element is almost always likely to result in an alteration. Of course, this could have far reaching consequences to the brand owner, including a loss of rights and an inability to rely on registration in proceedings against third parties.
Although not all rebrands will necessitate additional trade mark protection, there will be some instances where the mark being used has strayed from the registered mark to the extent that new filings are recommended. In addition, it is important to think about updating your trade mark protection if you are thinking about offering new goods/services to consumers. Please get in touch if you would like any advice about your existing trade mark protection and any recommended changes.