Olivia Hamilton: Olivia works with a range of clients, in a range of industries, from famous “Superbrands” to new tech start-ups. She has a particular interest in pharmaceutical trade mark law and how this interlinks with regulatory requirements.
As well as trade mark protection, Olivia frequently advises on design law, domain names and contentious matters. For example, Olivia has represented clients in trade mark registry proceedings at the UKIPO and assisted on a UK High Court case. Olivia has also successfully prosecuted domain name disputes at Nominet and WIPO, with an unbeaten track record, which has led to the recovery of multiple bad-faith domains.
Logos often evolve over time. It’s a way to maintain consumer recognition by retaining familiar, recognisable features, whilst also keeping up with design trends.
Google recently “refreshed” its logo for its Chrome products after a gap of eight years:
Here, we look at some issues this creates for trade mark rights.
The key issues:
Non-use: old variations of a logo, registered as trade marks, can be vulnerable to cancellation in the UK if not used for a 5 year period, following registration; and
Bad faith: frequently re-filing very similar marks can be an indication of bad faith, which is a ground of opposition or invalidation in the UK
Non-use
Trade marks can be cancelled if they are not used for a continuous 5 year period, after registration[1].
Use of a variant of a registered mark (e.g. an updated version) can sometimes count as valid use, but only if the differences do not alter the distinctive character of the registered mark[2].
The questions to determine whether the distinctive character has been altered (and therefore whether the mark has been used as registered or should be revoked) are:
- what are the points of difference between the mark used and the mark registered?
- do they alter the distinctive character?[3]
The first question is often straightforward. However, the second question is more nuanced.
Each case turns on its own facts however, some trends appear to be:
- the more distinctive a mark is, the less likely it is to have its character altered by small changes. A mark’s distinctiveness can be acquired, as well as inherent[4];
- small differences are more likely to mean the distinctive character is not altered[5];
- large and prominent differences, are more likely to alter the distinctive character.
Bad faith
Trade marks can be opposed or invalidated if they were filed in “bad faith”. There is no definition of bad faith in legislation however, case law shows that it is a factor-based test[6], which tends to involve dishonesty or dealings that fall short of the standards of acceptable commercial behaviour[7].
Applicants are presumed to act in good faith, until bad faith is proven by a challenging party, on the balance of probabilities.
Repeated applications, for identical or very similar marks (e.g. logos adjusted following a brand refresh) can be challenged for bad faith. Such applications can circumvent the need to prove use after five years of registration, a practice referred to as “evergreening”, which is seen as an abuse of the system.
Where there is a pattern of re-filings, the burden of proof shifts to the applicant, to explain the commercial rationale[8] behind its application.
If there is proof a mark was filed to extend the non-use window, this can be fatal. In the case of Hasbro, Inc v European Union Intellectual Property Office concerning the MONOPOLY[9] trade mark, it was claimed that i) re-filing is a common practice, ii) that the mark was in use (so re-filing wouldn’t cause harm to third parties), and iii) that the application was not exactly timed to coincide with the five year date. It was held that the open admission that the mark (which was identical to previous applications) was filed to avoid the need to prove use in future proceedings and this was enough for an allegation of bad faith to succeed. This case was decided after the UK’s exit from the EU, so is not binding, although it is probable a UK court would reach the same conclusion.
Where there isn’t such an admission, a trade mark applicant is in a better position. In the PELIKAN[10] trade mark case, there were only small differences between the registered trade marks and newly filed marks, which were the outcome of a brand “refresh” project. However, filing similar marks was not, on its own, enough to establish bad faith. It was accepted that filing new applications, as a logo evolves, is a normal business practice. Further in Skykick, it was held that:
bad faith may, however, be established only if there is objective, relevant and consistent indicia tending to show that, when the application for a trade mark was filed, the trade mark applicant had the intention either of undermining, in a manner inconsistent with honest practices, the interests of third parties, or of obtaining, without even targeting a specific third party, an exclusive right for purposes other than those falling within the functions of a trade mark.[11]
Ultimately, there must be a sensible and justifiable commercial rationale behind why a brand chose to file a new logo variant.
Google’s refresh
So, where does the law leave Google, or other brands that go through a re-style?
In our view, a new logo which, like Google’s, has only very small differences to a previous, distinctive, logo is fairly likely to be able to withstand a non-use challenge i.e. the new logo will constitute genuine use of the old version of the logo on the register. In that case, a new application might be difficult to justify as a reasonable commercial requirement.
However, there is always a degree of risk when a mark is altered. The more iterations a mark goes through, the further away it becomes from the mark as registered. A new application reduces the risk a non-use challenge would stick and so the option is unsurprisingly seductive.
That new application may face bad faith challenges. However, if there are clear records, which show the commercial rationale behind the new application was sound, and the application was not purely to re-start a window where proof of use is not required, there is at least an argument that the application was bona fide.
Alternatives?
One strategic option we always recommend for consideration is design protection. If a new logo has been in the public domain for less than 12 months, it can (subject to third party rights) be validly registered as a design and, in the UK, kept in force for up to 25 years. If a logo creates the same overall impression as a previous version in use, it’s likely the design will still register (so may act as a deterrent) however, it will be more challenging to enforce. Crucially, UK registered designs cannot be invalidated on the grounds of bad faith.
What does this mean?
Projects to update or refresh logos are inevitable. Filing for a trade mark is always the easy option. Keeping records of the commercial justification for a new application could improve a party’s position if it is challenged on bad faith. Filing for a registered design will offer an additional layer of protection.
[1] Section 46(1) Trade Marks Act 1994
[2] Section 46(2)
[3] Anheuser-Busch-Inc-v-Budejovicky-Budvar-Narodni-Podnik [2002] All ER (D) 42
[4] Specsavers International Healthcare Limited v Asda Stores Limited [2013] All ER (D) 355
[5] Thomas Pink v Victoria’s Secret UK Ltd [2014] EWHC 2631 (Ch)
[6] Chocoladefabriken Lindt & Sprüngli AG v Franz Hauswirth GmbH, Case C-529/07, ECLI:EU:C:2009:361; Chocoladefabriken Lindt & Sprüngli AG v Franz Hauswirth GmbH, Case C-529/07, ECLI:EU:C:2009:148
[7] Gromax Plasticulture Ltd v Don & Low Nonwovens Ltd [1999] RPC 367
[8]Sky plc v SkyKick UK Ltd, Case C-371/18, ECLI:EU:C:2020:45
[9] Hasbro, Inc v European Union Intellectual Property Office, Case T-663/19
[10] pelicantravel.com s.r.o. v OHIM (with Pelikan Vertriebsgesellschaft mbH & Co. KG as an intervening party), Case T-136/11
[11] Sky plc v SkyKick UK Ltd, Case C-371/18, ECLI:EU:C:2020:45 [77]
