Brands change and develop over time and trade marks are often updated and refreshed. It is important to consider whether a variation in your brand will require you to file a new trade mark application or if your existing registration would extend to protect the variation in your sign.
Firstly, using your trade mark in its registered form is always the safest way in which to use it. This is for a number of reasons, including to help prove genuine use of your registered mark if you ever come to rely on it during opposition proceedings. However, under UK and EU law it is permissible to use your trade mark in a form that differs from the form in which it was registered, subject to the requirement that the distinctive character of the mark is not altered.
In a recent decision of the General Court of the European Union (T-372/21 - Sympatex Technologies v EUIPO - Liwe Española (Sympathy Inside)), Liwe Española (Liwe) had to prove genuine use of its EU trade mark registration no. no. 009489436 for the word trade mark “INSIDE.” in relation to, amongst other goods and services, clothing. Liwe relied on this registration to oppose Sympatex Technologies’ (Sympatex) application for the word trade mark “Sympathy Inside” in relation to similar goods and services. Liwe’s registration for “INSIDE.” had been registered for over five years and Sympatex was therefore able to request that Liwe prove genuine use of the registration. Liwe submitted evidence of use of the registration, largely in the forms shown below:
The Opposition Division of the EUIPO viewed the evidence of use submitted by Liwe as sufficient to establish that genuine use of the trade mark registration for “INSIDE.” had been made in relation to clothing, footwear, and headgear. As a result the opposition was deemed successful in respect of multiple goods in Class 25 and services in Class 35. Sympatex appealed this decision to the Board of Appeal and, once the appeal was dismissed, to the General Court, arguing that the evidence submitted should not be considered as genuine use of the registration “INSIDE.”. Sympatex argued that the signs had an altered distinctive character. Sympatex argued that the inclusion of the circle around “IN” separated “INSIDE” into two words “IN” and “SIDE”. Furthermore, Sympatex believed that the omission of the full stop in the signs was of significance and considered that the overall visual and conceptual differences between the signs and the mark as registered should be viewed as sufficient to alter their distinctive character.
The General Court considered whether the relevant public would view the signs in question as broadly equivalent and whether the distinctive character of the signs shown above differ to that of the registered mark “INSIDE.”. The Court rejected Sympatex’s arguments and concluded that in the figures shown above, the typeface, colours, and circle around “IN” were only decorative in function. It was important for the Court that all the letters of the word elements were reproduced in the same typeface, in the same size and placed on the same line so that despite the stylisation present the figures would still be understood as being composed of the single word “inside”. Furthermore, the Court considered the lack of the use of the full stop at the end of the signs to only constitute a minor difference. The Court therefore held that the differences did not constitute an alteration to the distinctive character of the mark as registered.
The Court further confirmed that the consideration of whether or not a trade mark was used in a form differing from that in which it was registered is not affected by the fact that the different form may itself be separately registered as a trade mark.
This case highlights that while it is possible to prove genuine use of your sign via a variant of the form in which it was registered, this will frequently involve a risk of the use not being considered valid, thereby potentially leading to long and unnecessary proceedings and posing a risk to your registered rights. If you have any queries over whether a variation or update to your branding will require you to file a new trade mark registration, or the risks that relying on outdated registrations pose, please do not hesitate to seek our advice.
