A recurring question concerns the possibility of making graphic changes to a registered trademark, in particular whether this is permitted by law and, if so, under what conditions.
In this post we talk about:
If you have had the opportunity to read some articles of this blog, you are aware that there is not an universally valid answer, but there are possible different solutions depending on the law of the State in which the trademark is registered and on the practice there in use,
In this article we take into consideration the European Union trademarks and therefore the European Union Trademark Regulation n. 2017/1001 and the practice adopted by the EUIPO.
According to article 18, 1. a) of EU Regulation 2017/1001:
“it shall also constitute use the use of the EU trademark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trademark in the form as used is also registered in the name of the proprietor”.
The Court of First Instance (case T-194/03, 23 February 2006, Bainbridge,§ 50) provides that:
“the purpose of that provision is to allow the proprietor of the registered trademark, on the occasion of its commercial exploitation, to make variations in the sign, which, without altering its distinctive character, enable it to be better adapted to the marketing and promotion requirement of the goods or services concerned”.
But adds that in situations like this
“The sign used in trade differs from the form in which it was registered only for negligible elements, so that the two signs can be considered as equivalent”
The point is:
how can we determine when the elements are negligible?
In order to do it, it is first of all necessary to find the distinctive and dominant elements of the registered trademark and verify whether they are also present in the modified logo used in the practice: if the trademark is composed of several elements and only some of them have distinctive character , the alteration, substitution or omission of these elements can determine the alteration of the distinctive character and the non-equivalence between the trademarks as used and the registered trademark.
EUIPO guidelines help us by establishing, for example, that:
a) with regard to additions: “if the addition is not distinctive, is weak and/or is not dominant, it does not alter the distinctive character of the registered trademark” (30/11/2009, T-353/07)
b) with regard to omissions: “if the omitted element is in a secondary position and not distinctive, its omission does not alter the distinctive character of the trademark” (24/11/2005, T-135/04, Online Bus, EU:T:2005:419, § 37).
We propose some examples taken from the EUIPO guidelines to let you know how complex may be the concept of distinctiveness.
Graphic additions to a registered trademark
In the practice it may be common to see 3 cases of additions to a registered trademark:
1) Use of several marks simultaneously: this is the case in which a trademark is accompanied by the mark of the business or product group (house mark). This is not the use of the mark in a different form, but the two independent marks are validly used at the same time. Two or more trademarks may be used together in an autonomous way, or with the company name, without altering the distinctive character of the earlier registered trade mark (06/11/2014, T-463/12, MB, EU:T:2014:935, § 43).
For example, in the case examined on 29/02/2012 (T-77/10 and T-78/10), the registered trademark “L.114” (French registered trademark for “pharmaceutical products”) was used in the form “Lehning L 114”. The Court found that neither the missing of full stop between the capital letter “L” nor the addition of the word “Lehning”, house mark, alter the distinctive character of the mark.
2) The addition of other verbal elements: in principle, a difference in words or in letters constitutes an alteration of the distinctive character; however, sometimes the additions are considered acceptable but it happens when the distinctive character of the mark is not altered.
For example in case 19/01/2009 R 1088/2008-2, confirmed by T-132/09 on 15/02/2010 it was considered acceptable that in the trademark epco, below the wording “SISTEMAS”, it was present also the wording “SOCIEDAD LIMITADA” and/or the emblem of an E with the words “epco SISTEMAS S.L.” because also in this case the distinctiveness of the mark was not considered compromised.
Conversely, in case R89/2000-1 of 23/04/2000, in which it must be decided whether the registered trademark CAPTAIN was equivalent to its use in practice as CAPTAIN BIRDS EYE, the Board of Appeal decided that the two brands were very different.
3) The addition of figurative elements: in case where the figurative element is merely decorative, the distinctive character is not affected.
For example, in case T-551-12 of 23.01.2014 (registered trademark SEMBELLA, its actual use), the Court considered the figurative elements decorative and insignificant, such as not to alter the distinctive character of the trademark.
Graphic omissions to a registered trademark
If the omitted element is in a secondary position and not distinctive, its omission does not alter the mark (24/11/2005, T-135/04, Online Bus, EU:T:2005:419).
In case T-135 of 24/11/2005 (registered trademark , its actual use), the General Court considered that the omitted wording ‘Betreuungsverbund für Unternehmer und Selbständige e.V.“, in small characted and having descriptive meaning, was a not distinctive element of the trademark and that for this reason its omission was admissible.
In case B 103 046 concerning the registered trademark “CASTILLO DE PERELADA”, the omission of the preposition “DE” in the current use “CASTILLO PERELADA” was considered admissible because not affecting the distinctive character of the trademark.
Unacceptable omissions to a registered trademark
In case T-46/13 OF 21/01/2015, the Court took into consideration the relationship between the registered trademark and its use as in order to evaluate if the omission of “La Sabiduria del Sabor” alters the distinctive character of the earlier mark as registered. The translation of the trademark is “Tastes of Navarra – The wisdom of the tastes”. The Court considered “Sabored de Navarra” descriptive terms evoking a qualitative concept (taste) and a region of Spain, therefore descriptive elements, while the wording “La Sabiduria del sabor” is a play of words charactering the trademark and becoming the distinctive element od the sign. Its omission is therefore considered not admissible.
In case R 12566/2008-4 of 26/03/2010 the registered form was “SP LA SPOSA” but its current use was “LA SPOSA” or “LA SPOSA COLLECTION” to distinguish “female wedding dresses” and as such clearly descriptive of the products distinguished by the trademark. The combination of the letters “SP” constitutes a distinctive element because placed at the beginning of the trademark and meaningless. For this reasons, the variants of the trademarks omitting the letters “SP” were deemed suitable for altering the distinctive character of the trademark.
Alterations to a registered trademark
According to EUIPO’s Guidelines (Part C, Opposition, 184.108.40.206.)
“Word marks are considered used as registered regardless of typeface, use of upper/lower case or colour.”
Therefore, such use is considered use of the registered mark.
Using a purely figurative mark (without word elements) in a form other than registered often constitutes an unacceptable alteration.
In composite trademarks (composed of word and figurative elements), changes to some elements, when secondary and not distinctive, could be accepted.
In case T-361/13 (18/11/2015) the current use of the trademark Vigar has been analyzed in comparison with its registered form.
The registered trademark was as you see on the left , but its current use was as you see on the right. The Court considered that the amendments did not alter the distinctive character of the registered trademark because the distinctive element of trademark must be seen in the word “vigar” – invented word and inherently distinctive -, while all the other elements must be considered minor elements. As a result, the use of upper case or lower case, a different orientation of the same background, the adding of three dots instead of the crown have not been considered able, in this case, to alter the distinctive character of the trademark.
Unacceptable alterations to a registered trademark
Where a mark is composed of several elements, only one or some of which are distinctive, that have rendered the mark as a whole registrable, an alteration of that element can cause the non-admissibility of the amendments by reason of the alteration of the distinctive character.
In case R 159/2005-4 of 30/03/2007 was examined the trademark MEXAVIT, which in current use was MAXA-VIT C. This modification was not considered acceptable as the separated letters VIT were intended as a descriptive abbreviation of the word Vitamin, above all for the presente of the letter C (Vitamin C).
As you have seen, changes are usually admissible to the extent that they do not alter the distinctive character of the trademark, but this is exactly the element which is not always easy to understand.
The advice of an IP expert will certainly help you to evaluate, if you want to make a restyling to your registered trademark, if the graphic changes could risk not being accepted.
For further information and examples, we invite you to read the paragraphs 220.127.116.11., 18.104.22.168. and 22.214.171.124. of EUIPO’s guidelines.