AJPark

Often for a business this means making changes to its brand.  Not necessarily large changes, just subtle tweaks here and there to refresh the overall look.  If the business brand is registered as a trade mark, making a change, however minor, could impact on the intellectual property rights gained through registration. 

A trade mark registration can be removed from the trade marks register if it has not been used in the three years before the date of the application to remove it.  And the trade mark must have been used in a form that is not markedly different to the form of the trade mark originally registered. 

In short, this means if a trade mark is registered in one format and it is used in another format, then the rights held may be different to those anticipated or may not exist at all.  This could have downstream effects if the business wanted to sue another business that has adopted the same trade mark.  It could also detrimentally affect a transaction where someone wanted to buy the registered trade mark but on investigation, discovered it was not used as registered.        

So what changes can be made to a trade mark without impacting on registered rights?  In reality, not many.                                

The Trade Marks Act says you can use a trade mark "in a form differing in elements that do not alter the distinctive character of the trade mark in the form in which it was registered".      

The limits of what alters the distinctive character of the trade mark have been considered and found fairly narrow.

Use of ‘Elle’ (in block letters) was not considered use of the registered mark ‘elle’ in a circle with a cross graphic.    ‘Golden Bake’ depicted in a white stylised italic font was found not to be use of the registered trade mark ‘GoldenBake’ in orange letters set against a white rounded rectangle background surrounded by other coloured rounded rectangle borders.

A logo trade mark featuring the words ‘Vapor Action’ was not considered use of the same registered logo with the words ‘Vapour Action’.  The American spelling of ‘vapour’ was considered an important and distinctive part of the trade mark.  Yet the trade mark ‘Second Skin’ was saved from revocation by relying on use as ‘2ND Skin’ because the difference between the two was considered insignificant.

Very small changes to the look of a brand can make a difference. The court will look at the points of difference between the brand as used and the trade mark as registered and consider whether they alter the distinctive character of the registered trade mark.

To keep a trade mark safe from a revocation action for non-use, the trade mark must not only be used, it must be used as registered. What may be considered an insignificant tweak to a brand may be a step too far. 

Rights can be safeguarded by getting a new trade mark registration for the fresh image of the brand.   Provided the new trade mark is used in the form registered, this most valuable business asset will remain secure. 

An edited version of this article was published in Apparel magazine February 2008

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  Corinne Blumsky

  Partner