In this Intellectual Property Update we consider whether minor amendments and changes might be diluting the value of your company's trade mark in the long term.
We examine the legal implications of changes to your trade mark and reflect on some preventative measures that may help protect your investment.
We also consider recent changes to legislation regarding trade mark registrations.
The impact of amendments to trade marks
Here is a scenario. When developing a new marketing campaign or revising a public website, a junior art director or web development contractor may need to shrink, enlarge, repurpose or somehow change the appearance of your company's logo or trade mark.
In this case, is it necessary to apply to register the "new" trade mark? The answer depends on the nature and extent of the change.
Section 7 of the Trade Marks Act 1995 (Cth) allows a person to use a registered trade mark with "additions or alterations that do not substantially affect the identity of the trade mark" while still being covered by the registration. Whether the changes substantially affect the identity of the mark will be a question of fact, answered by conducting a side-by-side comparison of the "new" trade mark with the existing registration.
If the change is only minor, it is unlikely to warrant a fresh trade mark application, however, it is important to think about the cumulative effect that a series of relatively "minor" amendments may have in the long term.
Gradual change may result in a trade mark being used by a company that is substantially different to a registered version. This has a number of important consequences for the company.
The company may wish to consider a fresh application to protect its rights in the "new" trade mark.
Its rights under the existing registration may have been diluted as a result of the incorrect use of the trade mark. In particular, if the Registrar or a Court were to find that the use of the "new" trade mark did not constitute use of the registered trade mark, the registration may be removed for non-use.
Flexibility and protection
There is flexibility when it comes to using and protecting registered trade marks. The registration of a 'word' trade mark in block capital letters will allow the owner to use the word in any combination of upper and lower case letters. Also, the registration of a trade mark in black and white permits the owner to use the trade mark in any colour combination. If there is a particularly distinctive way that the trade mark is represented, like a special font or specific colour (Tiffany and Co. have claimed the colour "robin's egg blue" as an essential feature of its trade mark registrations) it may be advisable to seek specific trade mark protection for that representation.
Conclusion
The best way to protect your company's investment in its trade marks is to ensure they are used in the form in which they are registered. Consistency in this approach can generate goodwill and strengthen reputation.
An audit of your trademark usage and comparing it to your register of marks, is a simple exercise that can enable you to provide an extra layer of protection for your brand and your business.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
