Registered your trade mark but then changed your look? Before refiling, try this.

Tali Blecher

Tali Blecher

As my selfie album will confirm, I change my hair with irritating frequency. In the last few years, I’ve gone from mid-length shag to pixie cut, curly to straight, side fringe to bob, black to all-over fire engine red and back to natural (whatever that is). Maybe it’s generational fidgetiness. Or a deep-rooted fear of commitment. Either way: after a while holding a particular look, I get bored.

And so it goes for brand owners.

“Relax, it’s just a brand refresh”

Brands like to update their look from time to time too. But rarely is it boredom that prompts a refresh. More often, there’s a proven need to modernise, engage new customers or reconnect with existing ones.

Here are some examples of brand refreshes – all backed by market research:

We can see that the “After Versions” are somehow more modern than the “Before Versions”. We mightn’t know why exactly, but it’s clear. Inevitably, things will continue to change. As sure as night follows day (or regret follows perm) the After Versions of today will become the Before Versions of tomorrow.

IP implications 

Usually, around the time a company revamps its brand, we’ll get instructions to file and register the After Version. It’s a low-stakes and often low-priority item on a client’s legal agenda. And while we definitely recommend that clients register the current version of their brand, there are some downsides to re-filing.

  1. Cost. Depending on the scope of coverage, it can cost several thousand dollars to register a new mark. So this low-stakes legal requirement isn’t cheap. Also, the client’s existing trade mark registration (for the Before Version) will usually only be part-way through its term of registration. Abandoning the Before Version means sunk costs.
  2. It takes time. 7.5 months to register a new trade mark, even if all goes smoothly.
  3. Abandoning a registration for the Before Version means foregoing an early priority date. This can have serious implications in a trade mark dispute.

For many clients, these downsides are the cost of doing business. But there might be a better alternative: amendment.

When can a trade mark be amended?

IP Australia will allow a trade mark to be amended where the After Mark is “substantially identical” to what was originally registered.

The law says that two marks are substantially identical when a “total impression of similarity” emerges when they are compared side-by-side. The marks have to be “exactly similar in everything that matters for all relevant purposes”.

Sounds like a strict test, but applying it involves a real element of subjectivity. And courts and decisionmakers at IP Australia have begun to apply the test very liberally in recent years. Here are some examples of marks that have been considered substantially identical under Australian law. The first few pairs of marks are clearly substantially identical, but as you read down the list you might start to scratch your head.

These decisions all arose out of disputes between the owners of Marks 1 and 2: that is, two parties were asserting a superior right to use Mark 1 or Mark 2. But because the test for substantial identity is the same in the dispute context and the amendment context, we can assume that Mark 1 could be amended to Mark 2 if both were owned by the same company.

Here are some examples of trade marks that we have successfully amended before IP Australia on behalf of clients:

Why is amending better than refiling?

As the Australian IP Office and courts continue to lower the bar on what constitutes a substantially identical pair of trade marks, brand owners have their biggest opportunity yet to utilise the amendments mechanism under the Trade Marks Act to update their existing trade mark protection. This saves time and means better legal protection because the priority date of the original trade mark registration is preserved.

Amending is also cheaper than re-filing. Applying to amend a registration involves completing an online form. This requires some admin time but no substantive legal input. It should only cost about A$300.

Amendments to the representation of a registered trade mark aren’t publicly advertised either. Once the Registrar determines that the After Version is substantially identical to the Before Version, the mark will be amended (usually within a few days) and third parties won’t know to challenge the decision.

So if you’ve refreshed your brand and your IP lawyer has recommended a new trade mark filing, ask them first if an amendment is possible.

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