Use of a trademark different from the registered form
In our fast changing world constant development is a key to success. Brand owners are no exception: most of the well-known marks (speaking mostly of figurative marks) have changed and evolved over the last decades. Notable changes can be observed when looking early IKEA or Shell logotypes:
Changing a logo significantly is challenging from a trademark law perspective. Using a trademark in forms different from that registered is affecting the potential proof of use which is essential to the enforcement of trademark rights and to protect the validity of registration. Therefore trademark owners must carefully consider how far they go in changing their logo during commercial use and still rely on the earlier registration of the older logotype. Is it a change of fonts or colors or adding an entirely new visual element? Different jurisdictions (even within the EU) have different answers and solutions which makes the change and management of global portfolios problematic.
The EUIPO published a series of guidelines to provide users with the current practice of the Office regarding the European Union trade mark system and the Community design system. The recent guidelines of EUIPO - aiming to harmonize the European practice and eliminate divergences - provides detailed requirements with regards to the assessment of acceptable use. The core rule is that any change in the actual use from the actually registered trademark cannot affect the distinctive character of the mark which has to remain identifiable. To decide if an addition or omission in use is acceptable, the distinctive character of each element has to be analyzed by the Office. The more distinctive and dominant the element is, the less change can be acceptable during actual use. If the word elements are the most dominant, figurative elements can be decorative or even negligible and therefore they do not alter the distinctive character of the mark.
The relevant practice -assessment of actual use and whether it differs significantly from the originally registered mark- in other jurisdictions like the United States or China may differ from that of the EU. Furthermore, the USPTO allows e.g. amendments (including color) of the registration of figurative marks if such change does not materially alter the character of the mark. Alteration of the EU trademarks in the Register is not allowed unless it relates to the proprietor’s name and/or address and does not substantially affect the identity of the trade mark.
A strategy previously employed by brand owners was to register figurative marks in black and white as such registration provided protection for the same sign in different colors. However EUIPO has changed this previous practice. Thus the use of the figurative mark in different colors than those in the registration will be assessed according to the previously mentioned guidelines. It means that black and white registration does not allow an automatic protection for all color combinations. Following a recent decision by the Patent and Market Court of Appeal the Swedish Patent office has adopted this harmonized practice, therefore owners of colored marks registered only in black and white may consider filing additional applications as these marks are not considered identical to corresponding marks in color anymore.
Due to these differences trademark owners should ensure that the figurative mark they use are identical to the registered mark. If an update or amendment of such figurative marks cannot be avoided they will have difficulties to find a single global solution. To be on the safe side, if the risk is too high that in certain jurisdictions the amendment would not be accepted as legitimate use, it is best to protect the amended figurative marks with new registrations.
 United States Patent and Trademark Office
 The Patent and Market Court of Appeal decision PMÖÄ 435-18