Does a brand new look mean a brand new brand?

Wednesday 8th August 2012

Your company obtains a trade mark registration for its logo. Some years later, you modernise your packaging and logo with a fresh new look. Do you have to go through the registration process again? Is there a way around this?

Trade mark law requires you to make genuine use of the mark you have registered. If you do not, then a third party may be able to remove the mark from the register on the grounds of non-use (“non-use revocation”). The law allows a trade mark to be varied from the form in which it was registered, but only to a certain extent. To work out whether use of your new logo will be sufficient to defend against non-use revocation of your old registered logo, we must first consider the differences between the marks. We must then consider whether those differences alter the “distinctive character” (under New Zealand law) or “substantially affect the identity” (under Australian law) of the mark.

Examples of differences which have been found to alter the distinctive character, or substantially affect the identity of a mark include the following:

  • Splitting the word Goldenbake into two words “golden” and “bake” and representing them one on top of the other, rather than side by side, and in different lettering and colouring compared with the original logo, and without the distinctive rounded rectangular border included in the original logo.[1]
  • Presenting the words VAPOUR ACTION in a foreign     language, using the same imagery and stylisation but different words and using the American spelling of the word “vapor” (i.e. “vapour”) in the mark. Each of these examples was found to alter the distinctive character of the mark.[2]
  • Obscuring the word “market” in the mark MaltMarket Bar & Kitchen, so that the dominant words in the mark were Malt Bar & Kitchen. This was done by separating the word “market”, reducing its size and inserting it horizontally into the “l” in “Malt”.[3]

One option to avoid the problems associated with a change of stylisation for a logo mark might be to register the words within the logo in plain type at the outset. It is generally established that registration of a word mark allows for use of the words in various special scripts or with embellishments, without the risk of non-use revocation.[4] However, if your stylisation goes too far, then the risk remains. This is particularly risky where the logo includes a figurative element (e.g. an animal image), unrelated to the words present in the logo or the goods and services you are using it upon. Furthermore, if the design of your logo is particularly important to you, registering a stylised logo increases your chances of being able to stop a competitor adopting a similar look and feel. In these cases, both forms are normally registered.

Every new logo will need to be assessed on a case by case basis. If you have recently changed the look of your branding, we recommend Baldwins IP review your current registrations to ensure that they still provide adequate protection.

[1] Goodman Fielder New Zealand Ltd v George Weston Foods (NZ) Ltd IPO T13/2007, 26 March 2007
[2]Cadbury Ireland Ltd’s Registrations IPO T04/2007, 29 January 2007
[3]Tricarico v Dunn Bay Holdings Pty Ltd. [2012] FCA 271
[4]Morny Ltd’s Trade Mark (1951) 68 RPC 55

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