Playing with Trademarks – Watch Out

In Insights, Uncategorized

18 January, 2013

If you ask us, we will say that you shall register your trademark as you use it and use your trademark as you have registered it. However, as times goes by you may prefer to play a little with your trademark and to make minor changes without filing a new application. You may for example prefer to delete the vowels or to use the trademark as a verb. From a marketing perspective this may be a good idea. It provides attention to the trademark and hopefully the trademark is top of mind in your market segment.

From a legal perspective, the idea may not be so brilliant. What is the risk? Well, first of all you may risk having no protection for the trademark you spent money on marketing. In most countries, someone else may therefore register “your” trademark without vowels or the other changes as soon as you have spent money on marketing and leaving you with limited chances to stop this – simply because you have no trademark rights to the trademark you have used. The assumption most certainly is that this was not the intention.

Another problem may be that the use-requirement may not be proven fulfilled if you have not used the trademark as it is registered. Case law differs on this point and some authorities accept use of a trademark in a form slightly different from the registered trademark, but most authorities are very strict when evaluating whether the use requirement is fulfilled. In other words, your registered trademark may be vulnerable. The safe side is to use the trademark as registered. If you wish to use the trademark for example without vowels, the recommendation is to register this as a new trademark.  

A variation is to bend the trademark. This often happens when consumers have no other obvious (enough) word for an action. An example is “to google” something. GOOGLE is a trademark and should not be bend when used. Most trademark owners put a lot of effort in finding other words for the relevant actions and to make people use this instead. The reason is that the trademark will risk dilution if used as a verb and of course there is only little mercy if the owners themselves use the trademark as a verb.

Playing with a trademark requires that the trademark has a very strong position and that it is done only to a limited extent and next to normal use. So, dear reader, if you wish to play with your trademark, you must be very aware of the risks. Our advice is to register the trademark as you wish to use it and use the trademark as registered.

Henriette V. Rasch, Attorney at Law, Partner

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