Refreshing the TEMA logo
TEMA based its opposition against the wordmark TEHA on its registered logo in dark blue and black. However, during the procedure, it became clear that TEMA had refreshed this logo years ago. The company had been using a logo with a different design for more than five years. But the new look was never registered as a trademark.
No use, no rights
In trademark law, there is a rule that you must use your registered trademark. If you don’t use your mark continuously for five years, you may lose your trademark rights. So, if you take the mark off the market, it’s clear: after 5 years, you lose your rights. However, the situation is somewhat more nuanced if you don’t stop using your mark but only give your registered logo a new look. At that point, you must always consider: would the use of the restyled logo still be seen as the use of the mark as I had previously registered it?
Different
The answer in this case is: no. Although both logos contain the word “TEMA,” the designs are still quite different, according to the European Court in its decision on May 3rd of this year. The use of different colors also plays an important role. The Court believes that the distinctive character of the mark has changed and concludes that the registered mark has not been used in the last 5 years. TEMA can no longer rely on this registration, and the company loses the opposition. The trademark TEHA receives European protection.
Q8
A similar issue arose in a remarkable case from long ago during the introduction of the gasoline brand Q8 in the Benelux. After numerous gas stations had already been rebranded with the new Q8 mark, the English company Duckhams suddenly appeared, holding an older trademark registration for the letter “Q” related to motor oil. In the subsequent summary proceedings, the court ruled that Q8 was infringing on Duckhams’ Q-mark and ordered the dismantling of its gas pumps.
Appeal
However, Q8 appealed the decision. During the appeal, it came to light that the registered Q that Duckhams relied on had received a new design long ago. This new, bolder Q was not registered. The design differed significantly from the registered Q, leading the Court of Appeal to rule that Duckhams’ trademark registration for Q had not been used and the rights had expired. Q8 narrowly escaped losing its trademark and was able to continue using its brand.
Be alert with a new design
Logos and trademarks are regularly updated to fit the times. What is often forgotten at such moments is to also check the trademark registration. The trademark register is full of marks that have already received a new look in practice. But is the new design still covered by the old registration? Minor adjustments may not pose a problem, but if you make more significant changes, it becomes risky. If you use a logo that deviates from the mark you once registered and you are unsure if your trademark registration still provides adequate coverage, don’t hesitate to contact Chiever for quick advice.
Bas Kist
