Change is not always good, particularly in the world of registered trademarks. If your trademark changes over time - due to the vagaries of marketing trends, fashion, style - you may find that your mark no longer matches the form in which it was registered. Minor changes will be tolerated. Major changes can be fatal to the mark.
As noted in our earlier post "It is important that a mark is used as registered. Where the mark changes over time, the mark owner should consider filing a new application for the modified form of the mark. Otherwise, the evidence of usage may show use of the modified mark, which may not be accepted as evidence of use of the mark as it was registered."
This point was illustrated in the recent decision in Guess? IP Holder L.P. v Les Montres Marciano Inc., 2015 TMOB 108 (CanLII), in which the design mark SPORT MARCIANO which was registered in association with watches, had evolved over time to show the word MARCIANO alone, as shown above.
The result was that Guess - the mark owner - could not tender evidence of any use of the mark SPORT MARCIANO in association with watches.
The registration was cancelled.
Lessons for business? Get advice on your brand portfolio - not just during the initial searching and registration process, but also during the lifecycle of your marks, including change management, the development of brand guidelines and enforcement protocols.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
