30 April 2020
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We are all now familiar with the social distancing guidelines set out by the World Health Organization and local government designed to limit the spread of coronavirus (COVID-19). A number of brands are now utilising the power of trade marks to emphasise this message by temporarily adapting or modifying their logos to reinforce the importance of the guidelines.

How are brands spreading the message?

In Brazil, McDonald’s posted an amended logo on Facebook, in which they’d separated their iconic ‘golden arches’. Meanwhile, Audi posted a video on Twitter in which the 4 intertwined rings that make up their logo separate from one another, accompanied by the slogan “Keep Distance”. Sportswear brand Kappa has temporarily separated the people shown in their logo so they are sitting further apart, using the adapted logo on their website, whilst media company TimeOut is using its own website to provide content about activities that can be done at home, alongside an amended logo in which “Out” is struck through and replaced with “In”.

The fact that well-known brands including McDonald’s and Audi are willing to make such striking changes to their house marks is a very bold statement and it really emphasises the importance of the message: we need to follow the advice and keep our distance to ‘flatten the curve’ of this virus and to save lives.

Physical distancing, social connectedness

One such brand working hard to encourage people to stay at home and follow the guidance issued is our client Myzone. As well as offering free on-line fitness classes to encourage people to stay fit and healthy whilst at home, they have temporarily altered their logo by introducing a space between the words ‘My’ and ‘zone’ and adding the phrase “physical distancing, social connectedness”. Phil Whittam, Group CFO, explained that the desire was to emphasise that it is physical distancing that is key, even though the terminology used by the media is often ‘social distancing’; we can still keep in touch socially, whilst being physically apart.

Trade mark considerations

Of course, a number of trade mark considerations come into play for any brand owner thinking about temporarily altering their logo, whether this be in the name of promoting social and physical distancing, or for some other reason.

What is the impact on genuine use of an existing registered right? 

In many countries, a registered trade mark will become vulnerable to cancellation if it is not put to genuine use for a continuous period of usually 3 or 5 years. In the UK and EU, the relevant period is 5 years.

If the alterations made to a registered trade mark are such that the new mark differs significantly from the registered trade mark, use of the altered mark is unlikely to constitute genuine use of the registered mark. As a result, if the adapted mark were to be used for an extended period of time, there is a risk that the registration may become vulnerable to cancellation for non-use.

However, this is unlikely to cause a problem in the present scenario. Any mark adapted to reinforce the message about the importance of social distancing is likely to be used for only a relatively short period of time and is unlikely to fully replace the existing mark on all products and packaging. Even if the logo is altered for a few months until the measures on social distancing are relaxed, this is only a short part of the 5 year window that is taken into account when assessing genuine use. As such, trade mark owners who will revert to using their registered trade mark within a few months should not be concerned, particularly as in most cases, businesses will not be willing to invest in new production or packaging lines to accommodate a temporary change in their mark, and there will therefore be at least some use of the registered mark alongside the altered version.

Is a new trade mark search required?

A further consideration that a brand owner should take into account before altering their logo is the question of whether use of the new mark could infringe the rights of others. Typically, before adopting a new mark or altering an existing mark, it is advisable to conduct trade mark clearance searches to check that there are no serious obstacles to use (and registration) of the mark in any important markets.

Nevertheless, the commercial risks associated with adapting a mark as a reaction to COVID-19 seem minimal in reality. Use of the modified mark will be fairly short-lived and the brand owner will presumably revert back to their usual mark as soon as things get back to normal. Most trade mark owners are unlikely to feel it makes commercial sense to enforce their rights against use of the modified mark in such circumstances. Given that the mark is being altered for a good purpose, to support social distancing and encourage people to save lives, an objection would almost certainly result in considerable negative press for the enforcer, particularly at a time when social media has the power to escalate a seemingly private dispute into the public domain in a matter of hours.

Is there any merit in filing a new trade mark application for the altered mark?

Some brand owners may consider applying to register their altered mark in some key territories, for example if they are particularly concerned about an unscrupulous third-party trying to copy the new mark and exploit it for their own commercial gain. However, for most, this will not be the best use of resources, especially at present when many are facing a number of difficulties and challenges across all areas of their business. A trade mark application for a temporary mark will always have limited value, and that value further diminishes the shorter the period of use of the mark becomes.

There is a high possibility that by the time a new application proceeds to registration, which usually takes around 3 to 4 months in the UK if there are no serious problems, the stringent measures on social distancing will have been relaxed and the new mark may not be relevant anymore. In countries where the application process is much slower, like the US, or the trade mark office has suspended activity for an extended period, there seems to be even less benefit, as the application may not even have been examined by the time the worst of the pandemic has passed.

Of course, since the altered or temporary mark is unlikely to be put to genuine use after registration, the ability to enforce the registration will also be time-limited, as the right will become vulnerable to non-use cancellation.

Is it possible to use the registered trade mark symbol alongside the altered mark?

The ® symbol is a representation made by a brand owner that they possess an enforceable trade mark registration and it can be a powerful tool for dissuading would-be infringers from copying or otherwise infringing the mark. As a result, in many countries, including in the UK, it is prohibited to falsely represent that a mark is registered (though use of the ® symbol or otherwise) if this is not true.

A brand owner who is contemplating temporarily altering their mark may question whether or not they can use the ® symbol alongside their amended mark. Although the rules and laws on this issue vary from jurisdiction to jurisdiction, the answer in almost all cases is likely to be no. It is not advisable to represent that you own a trade mark registration for anything other than the trade mark exactly as it is registered. As an altered mark will inevitably differ from the registered mark in a noticeable way, use of the ® symbol will be misleading and should be avoided, unless of course the brand owner registers the amended mark as well.

One alternative in the UK would be to use the ™ symbol next to the altered mark. This is generally seen to indicate that you view a mark as a trade mark rather than as a generic or descriptive term. However, this is not a universal rule and local advice should always be sought before doing the same in other countries.

Commercially speaking, not using the ® or ™ symbols next to an altered mark is unlikely to cause any significant problems, since the altered mark will only be used for a limited period of time and will likely not replace the existing mark in its entirety. Moreover, the new mark will resemble the original to a certain extent, meaning that consumers should still recognise the altered mark as relating to a particular brand.

What conclusions can we draw?

For most brand owners wishing to adapt their mark temporarily, the most logical approach will be to choose a design which does not differ too significantly from their existing brand (an example being the Kappa logo discussed above) and to use this alongside their registered mark, for example using the temporary mark on social media and in advertising, whilst continuing to use the registered mark on any products or their packaging.

The ® symbol should not be used for the newly altered mark, as this should only be used in conjunction with a registered trade mark.

Although worth considering, searches and applications are unlikely to be warranted, unless it seems that the new mark will be used for an extended period.

However, as is the case when making any alternations to branding, it is advisable to seek a specific opinion from an attorney before proceeding.

Co-authored by trainee trade mark attorney Joe McAlary.

This blog was also published in Intellectual Property Magazine. Read it here.

Rebecca is a Partner and Chartered Trade Mark Attorney at Mewburn Ellis. She handles all aspects of trade mark work, with a particular focus on managing large trade mark portfolios, devising international filing and enforcement strategies, and negotiating settlements in trade mark disputes. Rebecca has extensive experience of trade mark opposition, revocation and invalidity proceedings before the UK Intellectual Property Office (UKIPO), including very complex evidence based cases. Rebecca also has a strong track record in overcoming objections raised to trade mark applications.

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