Intangible assets, such as Intellectual Property, are gaining more and more economic importance, and with this, natural or legal persons, owners of trademarks and other distinctive signs, are frequently dealing with various problems related essentially to the use, protection, and preservation of their trademark.
For this reason, in this article we will briefly refer to a problem in the field of Industrial Property, which is often the subject of uncertainty for the different holders of exclusive trademark rights. Specifically, we refer to: Use of the trademark in a different manner from that in which its registration was originally granted.
When a trademark has completed its process, that is, once it has been assigned a registration number and its certificate has been issued, due to the fact that the requirements have been adequately met and the process has been correctly exhausted, the registration protection offered to it before third parties, is theoretically, conditioned to the effective use of the trademark in the market, in the same way as it was granted and registered, with all the elements that compose it as a whole.
This implies that, if the registered trademark consisted of words and a specific design, it must be respected, and should not be altered through variations, additions, or subtractions of its elements. This means that, if we have registered our trademark and for example, we have made a claim of the colors used in it, it must be taken into consideration that the protection offered to the distinctive sign precisely lies in its use with the same colors, strokes, figures, words, etc., that were originally included in the registration of trademark application.
However, as every rule, there is an exception, and our applicable law, as well as several foreign legislations, establishes that:
“…The use of the trademark in a form that differs from the form in which it appears registered only with respect to details or elements that are not essential and that do not alter the identity of the trademark shall not be grounds for the cancellation of the registration nor shall it diminish the protection conferred by it.”
From which it is clearly inferred that it is then allowed to use the trademark, in a different form from its original registration, if and only if, the variation does not lie in details or essential elements that alter the identity of the registration. Otherwise, it may be considered that the mark has not been used, since the Registry would treat the mark as if it were completely different.
Once this aspect has been made clear, we may ask, in what cases can we rest assure that our use of the trademark variant may be recognized or taken as the use of the already registered trademark in its original way. In this regard, several criteria have been mentioned, and they have not been uniform.
In Summary, the criterion is that to assess whether the variation in the originally registered trademark causes a significant alteration to its distinctiveness, it must be questioned whether both signs (original and modified) when compared globally to each other, are considered –or not- as equivalent by the average consumer. If they are identified as equivalent, this means that the modification, omission, addition, or combination of modifications in the mark has not reached the point of altering it enough for it to be treated in isolation as an entirely different mark.
If the variant of the trademark completely alters the distinctive character of the already registered trademark, a new registration must be filed for the variant that is being used, because otherwise it does not have registration protection, since it is already different from the one that is registered.
On the other hand, we must say, that even if the use of the trademark, in a different way than the one in which its registration was granted, may be recognizable, if we have sufficient means to file a new application for the trademark variant, provided that we have plans to use it in the market; to mitigate the risk, it would be ideal to register it.
To illustrate, we share some images of marks with different variants:
