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As a registered trademark owner, what are the main things I need to know?
Trademark registration grants its owner the exclusive right to use it. This right, of course, is granted after the successful completion of the trademark registration procedure, and if the trademark is registered in the EU – it must to be used within 5 years, as of the date of this registration.
The protection lasts for 10 years and can be extended indefinitely.
Why would I need to make changes?
In the process of using the brand, fashion changes, consumer tastes and perceptions change, and something that was previously liked and appreciated begins to lose its value and impact. In these cases, trademark owners have a desire to change the trademark so that it follows and responds to current trends.
Modernization and updating of the trademark are often associated with a new dynamic in the presentation of the trademark and the brand under which it is presented. Renewal of the brand is a turning point in which the owner of the trademark realizes that, registered in this way, it no longer reflects the true and desired image. The trademark is an element of paramount importance for the perception of your company. It is a key image, indicative of what it wants to denote.
There are numerous examples from practice in which, over the years, a brand changes and develops its image with the idea of meeting the current expectations of society, and in particular - of its most desired consumer. An example of this is the changes in the image of Shell - the changes made to it in the years 1971-1995 are almost imperceptible and relate mainly to the shade of yellow, but they are obvious if we compare the one used in 1900 and the current one.
The question arises - is a new registration necessary if I want to make minor changes to my already registered trademark - changing the font, its size, adding a word or color?
Does the use of the mark in a similar form, with minor differences from that in the original registration, meet the requirement of using the mark within a 5-year period applicable to marks registered at EU level?
What guidance does the case law of the Court of Justice of the European Union give us for answering these questions?
They are frequently asked of practitioners and require reasonable and prudent judgment. If the initially registered mark differs from the subsequently used one, would the registration of the original also protect the amended one? A reference point for the answer to this question is the leading decision of the Court of Justice of the European Union C-553/11, also known as the Proti case, which provides a nuanced answer.
Yes, to a certain extent.
Registration of our trademark would also provide protection for certain changes. These changes can be quite minor and insignificant, and sometimes they are more noticeable. This is a matter of judgment by a specialist in the field - a judgment that should be made independently in each individual case and from the perspective of the consumer. The most general rule is that if, in the consumer's perception, there are no major changes in the distinctive features - those that make the mark itself distinctive for the consumer), then the basic registration is sufficient to protect the changed mark as well.
And yet: The extent to which the changes made can be qualified as minor and not affecting the distinctive character of the mark should be assessed by a specialist in each specific case.
What is the case in the "Proti" case?
In the Proti case referred to above, the applicant had registered the trade marks “Proti”, “Protiplus” and “Proti Power”, and the defendant in the proceedings owned the later registered word mark “Protifit”. The applicant sought the cancellation of the mark of the defendant, who raised an objection for failure to use the mark “Proti” within the required 5-year period. The applicant, in turn, objected that it was using the mark “Proti” in combination by using the names “Protiplus” and “Proti Power”. The court of first instance rejected the appellant’s claims, and the appeal proceedings confirmed its decision. The Federal Court of Justice of Germany noted that the mark “Proti” should be regarded as having been actually used, because despite the amendments, in comparison with the mark “Proti”, “Protiplus” and “Proti Power” did not change the distinctive character of that mark, and the applicant had used them before the registration of the mark “Protifit”. In view of the question referred for a preliminary ruling, the Court of Justice of the European Union makes the following important clarification: the directive in force at the time of the specific request (now Directive (EU) 2015/2436) does not require strict correspondence between the form used in trade and the form provided for in the registration of the trade mark. This allows the proprietor of the trade mark to make changes and variations to the sign so that the latter meets the conditions of the developing market. The proprietor of a registered trade mark may therefore rely on its use in a similar form which differs from that in which the trade mark was registered, provided that the differences do not alter its distinctive character. This does not, however, prevent the different form from also being the subject of registration as a separate trade mark in order to achieve greater certainty.
The conclusion reached in the Proti case is also explicitly mentioned in the currently applicable regulation and directive.
And in short, what conclusions can we draw?
And in addition:
Another important conclusion that the Court draws with the Proti judgment is that the use of the mark in a similar form, different from the one originally registered, meets the requirement for use of the mark within the 5-year period, and constitutes use of an EU trade mark within the meaning of Art. 18, para. 1, item a) of the applicable Regulation 2017/1001. Information that we need to know in case of proving the use of the registered trade mark.
Therefore?
In conclusion, we should once again draw attention to the fact that the need for a new registration when changing the trademark, in order to benefit from the protection sought, must be assessed on a case-by-case basis.
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