AJPark

The retail landscape is constantly changing. Often for a retail business, staying current and up to date with the latest trends, research findings and best practice means making changes to your brand.

The current trend is for brands to be ‘decluttered’. Clean, simple brand names without over-the-top logos and graphics added are the order of the day. Simple brands have been shown to help customers recall them better. Most retailers can see the benefit of having a brand that resonates with their customers and is easy to remember and recognise.

Changes to your image can come in all shapes and sizes. You may want a totally new brand. Or sometimes subtle tweaks here and there will be enough to refresh the overall look or feel of your brand. 

For retail businesses that have traded for many years, keeping an established name will be of particular value and possibly small alterations to the presentation of your brand may be enough. The key is to make your brand look current without losing its original appeal, and more importantly, your faithful customers.

Whatever path you choose, it pays to get expert trade mark advice.  If you are going to adopt a totally new brand, then you need to be confident that you can adopt it without stepping on the toes of another business. To be sure that you are not infringing another person’s rights, you’ll need to arrange for a search of the New Zealand trade mark records and the marketplace. 

You don’t want to adopt a new brand and then find yourself caught up in a dispute with another business because they already own the same brand or something similar. You may not have heard of a business having the same brand in your region but trade mark rights give national protection. Another retail business located in a different geographic region may have already secured trade mark rights before you. It always pays to check.

Even if your proposed brand change is a mere tweak or declutter, you still need to proceed cautiously. Advertising wisdom says that about the time you become tired of your image, others are just noticing it. Frequency plays a huge role in memory recall, so your customers must be exposed to your brand many, many times for it to be ‘top of mind’.

You should proceed cautiously especially if you have previously registered your brand as a trade mark. Why?  Because making a change, however minor, could impact on the rights you have gained through trade mark 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 expected or may not exist at all. You might think you are “using” your trade mark but because you are not using it in exactly the way it is registered, you could find yourself facing an action for revocation and removal of your trade mark registration on the basis of non-use! This could have downstream effects if your business wanted to sue another business that has adopted your trade mark.

Using your trade mark in a form different from the one you have registered could also harmfully affect a transaction where someone wanted to buy the registered trade mark but on investigation, discovered it was not used as registered. A simple discrepancy like this can affect the price a buyer is willing to pay or worse still, make them decide not to proceed with the purchase at all.

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

The New Zealand 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 situation is similar in many overseas countries. The limits of what alters the “distinctive character” of the trade mark have been considered internationally and found to be fairly narrow.

Here are some examples. Using ‘Elle’ (in block letters) was not considered to be 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. A 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. And as you can tell from the examples given above, the results are often surprising.

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, your most valuable business asset will remain protected.

Making a change to your brand will also mean changing all of your promotional and marketing collateral so you convey the same look and feel and image to your customers. Before you embark on an image update, you should undertake an audit of all uses of your brand. Once your image change has been completed you can then systematically update all your signage, product stickers, pricing information, product specifications, website etc to reflect your new brand. Delete, remove or update any use of your old brand.

Letting others know about your brand update is also important especially if you use affiliate advertising, work with other partners or are involved in sponsorship. Unless told, these others will continue to use old brand images which will cause confusion and annoy your consumers. It may also reflect negatively on your brand.

Awareness and recognition are keys to growing your business.  And having an easily recognised brand is important. A little brand spring-cleaning, executed with care, may be just what you need to brighten your business’s outlook.

An edited version of this article was published in NZ Retail, August 2008

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  Corinne Blumsky

  Partner