The recent worldwide COVID-19 outbreak causes people to radically change behavior and habits in an attempt to flatten the curve as quickly as possible.
Whereas people are primarily responding to the global spread of COVID-19 by complying with strict social distancing rules, companies are doing the same. Audi, Axe, Chiquita, Coca-Cola, Kappa, McDonalds, Mercedes-Benz, Randstad and Volkswagen, are just a few of the (big) brands that have recently been promoting the message to keep physical distance and to stay home, by rethinking their original logos and slogans in an inventive manner.
Besides social distancing, all these redesigns have another thing in common: the original underlying sign (e.g. logo, name, slogan) on which the variation is based, is protected by a registered trademark.
As an innovative company, you may wonder whether you can also embrace and improve consumer engagement in times of COVID-19 (or other events) by tweaking your own trademark, and whether such seemingly excellent and inventive marketing tool is entirely without risk?
Trademark law principles principally rely on static, non-changing signs, in order to have consumers develop familiarity with these signs over time, allowing them to identify the origin of products and services and build a long-term association between a given sign and a particular company as the source of these goods and services.
Basic principles of trademark protection in the European Union are the following. First, the exclusive right to a trademark does not arise from being the first-to-use a certain sign (except for well-known trademarks), but from being the first-to-file such sign with a competent trademark office. Second, the protection is granted in relation to specific designated goods and/or services. Third, the scope of protection is limited to the sign as filed and must be used accordingly in the course of trade. If a trademark is not put to genuine use within five years following its registration, third parties can challenge it for non-use.
Adapting trademarks by “social distancing” redesign after filing, seems to contradict these basic trademark law principles. The question is whether such changes in the commercial presentation of the underlying sign can benefit from the protection of the trademark as registered? In other words, should a trademark owner consider filing a new trademark application if there is the slightest variation in the presentation of a sign, or does the original registration also protect against small or larger variations of this sign?
It is not the first time that companies are responding to events by altering their logos. Lacoste, for example, temporarily replaced its signature crocodile logo with the images of ten endangered species to help counter the threat of extinction. Since its launch in 1998, Google frequently adopts redesigned versions of its logos to mark national holidays or significant anniversaries.
According to the Court of Justice of the European Union (I) , the Benelux Court of Justice (II) and as codified in International (III) , European (IV) and Benelux (V) trademark legislation, the requirement of genuine use of a trademark is also satisfied by the use of that trademark in a form different from the form in which it was registered. At the condition, however, that the differences refer to elements which do not alter the distinctive character of the trademark in the form as registered. In other words, as a trademark owner you are allowed to make small (subordinate) presentation differences and variations of your sign, as long as this redesign is rather insignificant and does not consist of an alteration or omission of the distinctive element of the registered trademark.
In the examples above, the inventive COVID-19 redesigns are not altering the distinctive character of the original trademark. Therefore, in our opinion, these variations are allowed and will likely fall under the protection of the original trademark registrations.
Trademark owners should however bear in mind that the repeated use of different variations of their underlying trademark may cause consumer confusion, which defeats the essential purpose of a trademark: to signal the origin of products and services. Thus, responding in a quirky manner to events by altering your trademark is allowed, if it is done in moderation.
More in general, it is important to note that if you are (more substantially) refreshing your brand, this fresh sign should include elements which fully retain the distinctive character of the registered trademark, in order for the fresh sign to benefit from the registered trademark’s protection. Note however that it is generally good practice to obtain a new trademark registration for any refreshed brand.
(I) ECJ 25 October 2012, Bernhard Rintisch/Klaus Eder, C-553/11; ECJ 18 July 2013, Specsavers/Asda, C252/12; ECJ 29 November 2018, Alcohol Countermeasure Systems/EUIPO, C-340/17 P.
(II) BCJ 16 december 1994, Michelin, A 93/7.
(III) Article 5.C.2 Paris Convention for the Protection of Industrial Property.
(IV)Article 18.1.a Regulation (EU) 2017/1001 (EUTMR) juncto article 16.5.a Directive (EU) 2015/2436 (EUTMD).
(V) Article 2.23bis.5.a Benelux Convention on Intellectual Property (BCIP).
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