Defending a mark used in a modified form which does not alter its distinctive nature

Published onDecember 2012

The mark intends to identify a product and allow a better commercial exploitation and promotion. This sign may vary over the years, following fashions and trends: it may be used in association with other elements more or less descriptive of new activities.

One of the main issues in trademark law is to protect the graphics and/or verbal changes of the mark while preserving the seniority of the rights attached to the earliest registration, thus strengthening the trademark without exposing it to cancellation for non-use.

French law provides an appropriate (and most certainly unique over the world) solution which consists in renewing a trademark in anticipation and filing a new trademark simultaneously. This procedure joins the older trademark to the new one and the seniority of the older becomes attached to the most recent.

Besides, the law provides that the use of a trade mark in a form differing in elements which do not alter the distinctive character of the mark as it was registered shall not entail invalidation of the registration and shall not diminish its protection.

But what if the trademark owners have the variation of the mark registered?

The solution depends on the claim made by the owners:

– “The proprietor of a registered trade mark is not precluded from relying, in order to establish use of the trade mark for the purposes of that provision, on the fact that it is used in a form which differs from the form in which it was registered, without the differences between the two forms altering the distinctive character of that trade mark, even though that different form is itself registered as a trade mark”. Therefore, the use of a modified mark, even if registered, can be relied on to establish use of another registered trade mark (CJEU, 25 Oct. 2012, C‑553/11, Rintisch);

– If the owners want to claim protection granted to families or series of trademarks, which consists in a wider protection of the very common element of trademarks belonging to one said family, they must evidence the presence of each mark in the marketplace and therefore prove the use of each individual trade mark, even if some are merely a slight variation as compared to the others (CJEU, 13 Sept. 2007, C-234/06 Bainbridge).

A fair and clear solution!

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