Updating Your Branding is Fine but Watch Out for Excessive Variations of Your Trademarks

When it comes to trademarks, the reality is that businesses like to keep up with the times, including to remain desirable and relevant in customers’ eyes. As a result, though the concept of a trademark implies a fair measure of permanence, they do often evolve over time. This can lead to problems.

One such problems stems from the rule that a trademark that has been registered must, in principle, be used as is, as it was originally filed for and registered. Any change to what a trademark looks (or sounds) like may lead to an eventual court holding that the trademark now being used is no longer the original one but rather a “variation“. Such variations may jeopardize protection afforded by registrations, as such changes may break the requisite link between the original registration and the trademark itself. This may happen, for example, when two marks are shown in close proximity to one-another, when something is added or subtracted from a mark, or upon doing a redesign of a logo, etc. If it’s not done properly, the business making such a change may end-up in hot water.

The issue traces back to the fact that, in Canada, a registered must be used as shown in the registration certificate. After all, it stands to reason that you may not register X and then use Y, and expect to benefit from your registration, as a registrant normally would. Rather, when a discrepancy crops up, courts may find that the registration at issue no longer applies to use of the trademark actually being used by the business (and vice-versa), because the link between the mark and the corresponding registration has been severed, so to speak.

Though our courts do allow some changes to their marks by trademark owners, we now impose limits on how far businesses can take these “variations”. For example, the new mark should not mislead or become prejudicial to members of the public, nor should it result in what the average person would consider a new mark altogether, as opposed to making changes that are sufficiently limited so that the original mark is still recognizable. If the changes are seen as too substantial, then courts may conclude that what is now being used is actually a new mark that sufficiently differs from the original one to justify holding the two are (legally) distinct.

If and when this happens, trademark owners may lose the benefit of the shield that affords a trademark registration, in addition to risking having the original trademark registration stricken because the mark it relates to is no longer in use.

To avoid problems such as these, trademark owners should periodically reassess whether their trademark registrations are adequate or sufficient, and determine whether new trademark applications should be filed, including to cover recent variations of their trademarks.

Sure, to your marketing department this may be a simple redesign of your logo, but to an eventual judge, it may actually result in a brand-new trademark (no pun intended).