Trade mark modernization in the European Union: How to preserve the distinctiveness of your trade mark

1. Legal Framework

The legal protection of trademarks in the European Union is based on the European Union Trademark Regulation (EUTMR) and the Trademark Directive (TMD), which are intended to ensure the harmonization of trademark law within the member states.

In principle, protection under trademark law only relates to the registered form of the trademark. According to Art. 4 of the EUTMR, a trademark can be any representation which is capable of distinguishing the goods or services of one undertaking from those of others. The scope of protection of a trademark is determined by the representation entered in the register and published. Any use or further development of the trademark must take place within the limits of the registered protection in order to avoid the loss of rights.

According to Art. 18 EUTMR, there is an obligation to make genuine use of the trademark in the course of trade within five years from the date of registration. If there is no (further) genuine use, the trademark can be cancelled upon request.    

A trademark can also be used to preserve rights if it is used in a form that deviates from the registered trademark, as long as this deviation does not change the distinctive character of the trademark (Art. 18 para. 1 lit. a EUTMR). This allows trademark owners a certain degree of flexibility in adapting their trademark to changing market conditions or new design trends. The legal challenge lies in precisely defining the boundary between permissible adaptations and impermissible changes that could jeopardize the protection of the trademark.

2. Evolution instead of revolution - continuity is the key

One of the safest ways to modernize a brand is to adapt it gradually and carefully while retaining its basic structure and defining elements.

The changes should not impair the memorability. The aim must be to preserve the distinctive character of the brand.

For example, colours, fonts or smaller graphic elements can be changed, while defining elements - such as a dominant figurative element or a characteristic word mark - remain. As a rule, such changes are considered to be use that preserves rights within the meaning of Article 18(1)(a) EUTMR.

The so-called "Joint Communication - CP 8 Use of a trademark in a form differing from the registration" of the European Intellectual Property Network (an association of national and regional intellectual property offices of the EU, the EUIPO, international partners and clients of the Office) provides guidance on when such changes are still acceptable.

A successful example of a gradual and careful adaptation is the logo of the international food company Nestlé (see here). The basic structure and the defining elements have been retained over the years, although continuous adjustments have been made. An interesting overview of the development of other logos of internationally known companies can be found here.

3. Safety First - Legal protection

In any case, it is worth considering additionally registering modernized versions of your trademark.

If a modernization leads to significant changes that affect the distinctive character of the registered trademark, a new trademark registration is unavoidable in any case.  

Additional trademark applications should also be considered in connection with trademark modernization. In this respect, however, the problem of the so-called repetition trademark can arise. These are trademark applications that are very similar or almost identical to the previous trademark and are filed for the purpose of extending or circumventing the grace period for use pursuant to Art. 18 EUTMR. This can be problematic, as such misuse can have legal consequences.

Thus, repeat marks that were registered solely to circumvent the grace period for use may be classified as bad faith and their registration may be refused pursuant to Art. 59 (1) (b) EUTMR. The EUIPO Examination Guidelines also provide that such an abusive purpose can lead to a declaration of invalidity. In addition, there are approaches not to restart the grace period for use of such repeat marks if their application is closely linked to the expiry of the grace period of the original mark.

However, this does not mean that every new application for a trademark is automatically problematic. In particular, if the modernization represents an actual further development or update of the trademark, such as a slightly adapted logo, no intention to misuse can be assumed (see GC, judgment of 13 December 2012, T-136/11 - Pelikan, see here). It is therefore advisable to document corresponding intentions internally, e.g. by recording internal meetings in which corresponding plans were discussed or by keeping the instructions to external creative agencies.

4. Documentation and monitoring

Comprehensive documentation is a central component of any successful trademark strategy. In order to be able to convincingly prove the right-preserving use of a trademark in the event of a dispute, it is essential to keep detailed records of the type, scope and duration of use. These documents should not only contain information on the main trademark, but also include all variations, such as modernized versions or slightly modified designs. In particular, invoices, marketing materials, sales reports and digital evidence of brand presence can be invaluable in this regard (see also the guidance in the EUIPO Directive on Trade Marks, see here).

It is equally important to regularly review the trademark portfolio. Companies should ensure that not only the original trademarks, but also all relevant variants created by modernizations, are properly registered and protected. A neglected trademark portfolio carries the risk of valuable marks being overlooked and thus remaining unprotected, making both the defense of the brand and the establishment of a consistent brand identity more difficult.

Modernizations also entail specific challenges. Adjustments that are made to update the appearance can unintentionally increase the risk of confusion with competitor brands - especially if other market participants also make similar developments to their brands. Proactive and systematic brand monitoring is therefore of central importance. By using modern monitoring tools and continuously observing the competitive environment, potential trademark infringements can be identified at an early stage and legal action can be taken in good time.

5. Contact us!

We are happy to support you in modernizing your trademarks and help you to protect your trademark rights in the best possible way.