Let’s say you’ve been in business for a while and you have decided it’s time to modernise your brand. You want to remain recognisable to your existing customer base, while still giving your company an identity update. You may ask: Is my updated brand still protected by my trade mark registration? Oh, and I am also using my brand for additional products. Am I still covered?
This will depend on what degree the brand has changed. If it is substantially identical to the old brand, then the current registration may still cover it. However, I would suggest seeking amendment of the trade mark representation as registered. If the Trade Marks Office refuses to enter the amendment because the updated brand is too different, then file a new trade mark application for the updated trade mark.
Do I need to do anything else?
How would you feel if you couldn’t use your fresh, updated brand? If your brand has changed substantially then it is in your best interest to treat it like you would a new trade mark registration by once again undertaking an ‘availability search’. This way, you will be able to check on pending, registered and unregistered trade marks to see whether anybody else has earlier rights to something confusingly similar.
If your investigation reveals that a confusingly similar trade mark is already being used by another person or has been registered by another person for the same or similar goods or services, then you may have to rebrand again.
If you have a worldwide focus, then similar searches should be carried out in each country of interest to you. Some countries have a freely searchable trade marks database, others don’t (eg. USA – https://www.uspto.gov/trademark).
Regarding coverage of additional products, if the additional products don’t fall within the scope of the goods of the registration, then a new filing will be needed.
If you have any questions about trade marks, please do not hesitate to contact our Trade Mark team.