Exceptional circumstances set aside, use of a trademark is mandatory to its maintenance Nevertheless, such use must meet certain conditions to be held genuine, and here we enter upon an area which might seem clear-cut for it has been statutorily provided for but which proves to be more nebulous and uncertain that it appears, while at the same time having serious implications for the scope of your rights.
This legal principle is not new and current European regulation provides that the following would also be valid (cf. Article 18 of the European Trademark Regulation on the European Union trade mark (EUTMR 2017/1001):
use of the EU trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor (…)“.
The legislator thus appears to have allowed a degree of flexibility, taking into account the fact that a trademark changes over time, that logos and typefaces become modernized, that colors change etc. This is a pragmatic approach therefore (which is not very frequent in the legal field and should be commended).
Strict compliance between use and the trademark as registered is thus in theory not absolutely necessary, the limit laid down being not to alter its distinctive character and here we enter into the heart of the matter.
What then are the limits to the modifications that can be made to a trademark without risking revocation? How can elements of the mark differ from registration without altering its distinctive character ?
It should be recalled that the nature of these modifications and their possible consequences on the alteration of the distinctive character of the trademark is left to the discretion of judges and therefore of individuals…
We have selected several examples of decisions handed down by the European General Court and the EUIPO in order to illustrate our point.
Do you believe the uses below in a form differing in some elements to qualify as genuine?
Have a go! You will find out by clicking on the image.
Registered trade mark
Uses in a form differing in some elements – is it genuine or not?
So you see! Modifications that are apparently minor may prove risky, and on the contrary modifications that were major did not however lead to revocation of the registered trade marks.
As case law is inconstant on this murky issue, we strongly recommend you to inform us of any changes you make to your trademarks relative to the form in which they were registered.
We will study these modifications and advise you as to whether or not it is necessary to file such new forms as trademarks, in addition taking into account that the question may be assessed differently in different jurisdictions.
General Court Judgement T-2/16 of 30 November 2016-K&K Group AG / EUIPO
General Court Judgement T-666/18 of 3 October 2019 – 6Minutes Media/EUIPO
General Court Judgement T-83/14 of 15 December 2015-LTJ Diffusion/OHIM
General Court Judgement T-24/17 of 10 October 2018 – LA Superquimica, SA /EUIPO
General Court Judgement C-501/15 P of 11 October 2017-EUIPO/ CACTUS SA
Nawel Triba is an Intellectual property attorney with more than 10 years experience in law firms and IP firms. She joined Santarelli in 2018 and holds a CEIPI in “trade marks and Designs” from Strasbourg University. Nawel manages world-wide portfolios of IP rights for clients operating in diverse fields.