You registered your trademark and now, a few years on, it is time for change. Your brand needs to look different. That has consequences for its protection. What do you need to do to maintain the protection of your brand after a restyling?
You are probably asking yourself the question: why does restyling mean there are consequences? If your brand undergoes major transformation, the current trademark registration will no longer correspond. That means your restyled brand is no longer protected and you also therefore no longer have the monopoly on your trademark.
How is your brand changing?
It depends of course on what is changing and how you registered your trademark.
In most cases, restyling usually means a change in appearance: a new logo or typography, for instance. Be sure to check how you registered the trademark. If you are looking at a change in the design of your trademark, a registered word mark does not need to be renewed. This is because you registered the name only, not its form. With other types of trademark, e.g. figurative marks, the design of the mark plays a much greater role. Is the appearance of your registered figurative mark changing? If so, it might be one of the many cases where it is necessary to renew your trademark registration.
Is the name of the brand also changing? Renewing your trademark registration is always necessary in this case.
Do you have a word mark and/or a figurative mark?
If you would like to know more about the difference between a word mark and a figurative mark, our legal expert, Pieter Veeze, explains further in this article: Do you have a word mark or a figurative mark? Here's how to choose the best protection.
Are you providing other products or services with your trademark?
When you registered your trademark, you did so in one or more ‘classes’. Those are the products and services for which your trademark is valid. The distinct classes mean there can be several different trademarks with the same name: take ‘Ajax’ for example (football club, cleaning agents and fire extinguishers). If your products and services have changed, then it is also necessary in this case to renew your trademark registration.
A renewed trademark is a new trademark
You cannot change the name or logo within the existing trademark registration. You will therefore have to re-register the trademark. However, before you do, here are a few tips for you to start with:
Check whether your trademark is still distinctive. Your trademark's new appearance might fit better, but make sure it has sufficient distinctive character. A trademark that was seen as imaginative eight years ago might have no distinctive character at all today. For complete information about refusal of trademarks go to our dedicated page.
Determine the countries you would like registration for. In the Benelux you can register your trademark for Belgium, the Netherlands and Luxembourg all together. It is not possible to register a trademark in one of these countries separately. Are you also active outside the Benelux? Register then your trademark outside the Benelux. You can do this for the whole of the European Union at once, or for one or several countries together. Read more about trademark protection in the Benelux, EU or internationally.
Check whether your trademark already exists. The Benelux Trademarks Register contains all the trademarks applied for and registered that are valid in the Benelux. If your trademark does not yet exist for the goods and services you wish to register it for, then it is time for the next step. Your trademark already exists? Read here what you have to do.
Would you like to outsource your trademark registration?
BOIP is an independent body. We provide information about the different possibilities for registering trademarks but we cannot advise you about your personal situation. If you are having difficulty finding your way, there are of course experts who can assist you. You can find contact details of specialists in this field at www.bmm.eu.