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Put your brand portfolio through a stress test with this checklist by V.O.

A third of the world’s population is currently affected by quarantine measures, not to mention unprecedented mobility restrictions. Companies are experiencing a dramatic slump in their activities. However, even if it is difficult to imagine right now, there are better times ahead.

For us, several weeks of no contact seems eternal, but for protected trademarks it’s just a blink of an eye. If we look at the original year of registration of well-known brands that are still in use today, we get an idea of the massive economic upheavals that these trademarks have lived through.

They and many other well-maintained brands are still the main source of revenue for their owner companies. As long as they are extended, trademark rights are not subject to a time limit. They can last forever and, if they are properly maintained and continuously adapted to align with the company’s activities, become more valuable over time.

V.O. would therefore like to invite you to take a closer look at your brand portfolio at a moment when you are not rushed with your daily routine and, if necessary, adapt it to your current business activities in order to be able to restart with a strong brand in times of the reviving economy. We provide you with checklists that you can use to carry out a quick and easy stress test for your trademark protection rights. In today’s article we take a look at the brand itself, and in the second section, we’ll present a checklist for you to use with your brands.

1.       Is your trademark registered in the form in which you use it?

If you notice any discrepancies in this area, your brand is at risk in the event of conflict or dispute. Brands are constantly adapted to the changes and tastes of the market, either by way of revolution or evolution. With revolutionary changes, a completely new brand is created, mostly with (new) brand protection in mind.

Evolutionary changes are different and involve sometimes imperceptible changes to an already existing brand:

  • Has there been a new graphic or font change?
  • Have color contrasts or colors been changed?
  • Have parts of words or pictures been deleted or have some been added in?
  • Have the size relationships between the word and the picture components changed significantly?

Jurisdiction varies in different countries as to when a modified trademark no longer falls within the scope of protection of the registered trademark. The basic rule, however, is that if the distinctive character of the registered trademark is changed, then the new form is no longer protected.

In these cases, registration of the current trademark must be carried out.

2.       Does your trademark registration still include your current goods and services?

If you now offer different goods or services, your brand is vulnerable. In the event of a conflict, there may not be a stable legal basis, for example to act against imitators.

  • Do you offer any goods or services other than those offered at the time of your trademark registration?
  • Are you dealing with new types of goods and services that did not exist when the trademark was registered?
  • Are you thinking of expanding your business activities into new areas in the short or medium term?
  • Does the product and service directory of your brand only name the generic term (e.g. the ‘advertising’ service of class 35)?

According to the European Court of Justice’s ruling in the 2012 IP Translator case, it is no longer sufficient to simply name the generic terms for the respective goods and services. Instead, in order to achieve the desired area of protection, it is necessary to be more precise.

If you answer ‘yes’ to any of the above points, you should consider re-registering your brand.

3.       Is the registered owner of your trademark the true owner?

The ownership structure often changes within a group of companies or in cooperation with other third companies.

These changes are based on contracts within company groups or between independent companies. These contracts represent the substantive part. The change must then be formally reenacted in the trademark register. Similar to the process of buying a house, which is confirmed with a contract and fulfilled by entering the change of ownership in the land register.

If the actual conditions do not match the conditions shown in the register, this can lead to massive problems in the case of conflict with other brands. Chains of sale that are not entered in the registers can often only be traced at a later point in time with a great expenditure of time and money, and in the worst case, they can no longer be traced at all. Any intent to sell the brand may be nullified and the company left in a vulnerable position in the event of a trademark conflict.

The following changes should be entered into the trademark registers:

  • Company mergers (which company is the new owner of the brand)
  • Company name changes (for example, when Daimler became Daimler Chrysler)
  • Change of legal form (for example, when a corporation becomes a GmbH)
  • Change of address

Some countries charge fines for the late reporting of changes by the proprietor. Ownership changes do not require new registration of the trademark, they are simply submitted at the trademark offices upon request V.O. is happy to support you in stress testing your brand portfolio. For more info, get in touch with our trademark experts.

Also read the follow up on this article.

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