Logo Renewal! What happens when the trademark you use changes?

What happens when you change the design of your logo?

I’m in the process of designing a new company logo for my company, on the occasion of our 10th anniversary next year! It kinda reminds me of our first year, so it’s kinda fresh!
By the way, the original company logo is registered as a trademark, what happens to the new one?

Congratulations! We wish you continued success.
Depending on how much you change, you might want to file a trademark application for the new logo as well!

If you have been using a logo for a long time, such as a company or product logo, you may change the logo. While changing a logo can have the advantage of refreshing your image and broadening your customer base, there are also various risks involved in registering a trademark.
Before changing your logo, please read the following.

Can I change my registered logo trademark?

Regardless of whether a trademark is registered or not, changes to the trademark itself are not allowed once the application has been filed to the Japan Patent Office. There is no system for submitting a notice changes to the trademark itself.
However, there may be cases where a new logo is created or a design is changed after filing an application for a trademark, or a trademark is planned to be used in a manner different from that for which it was applied or registered.
What should we do in such cases?

● Reference article

Once an application has been filed, about the designated goods or services, it is not possible to add new classes or to change the scope of the trademark to a broader one than that of the application.

Renewal of trademark registration is a procedure to renew the duration of the right without changing the registered trademark.

What to do when changing the logo

(1) It is safe to file a new application.

If you intend to use your trademark in a manner different from that of the registered trademark, we recommend that you file a trademark application for a new logo design as well. The reasons why it is safe to file a new application are mentioned later.

(2) Change within the scope of “a trademark deemed identical from common sense perspective with the registered trademark”.

A registered trademark is the trademark itself that is actually registered with the Japan Patent Office. A trademark that differs in any part from this registered trademark is not identical to the registered trademark, but is a similar trademark. Trademark rights also extend to similar trademarks.

In terms of “use of a registered trademark,” using a trademark only within the scope of the above-mentioned similarity does not constitute use of a registered trademark. However, it would be difficult if all logos that are supposed to be used must be applied for trademark individually.
Under Article 50 of the Japanese Trademark Law, use of “a trademark deemed identical from common sense perspective with the registered trademark” is considered to be use of a registered trademark.

What is “a trademark deemed identical from common sense perspective with the registered trademark”?

What level of similarity is required for a trademark to be considered within the scope of a registered trademark, i.e., “a trademark deemed identical from common sense perspective with the registered trademark”?

① Trademarks consisting of identical characters with changes only in typeface

＜Example＞

A change in typeface (from Mincho to Gothic, from Kaisyo to Gyosho) or the use of Roman capital letters and lowercase letters between each other are considered as identical in the common sense of the society.
If the constituent characters are identical and the constituent characters are recognizable as letters, there is a high possibility that they will be recognized as identical.

② Trademarks that mutually change the indications of Hiragana, Katakana, and romaji characters, and that give rise to the same pronunciation and concept.

＜Example＞

Changes in character types (e.g., Hiragana to Katakana, Katakana to romaji, romaji upper case to romaji lower case, etc.) are considered as identical in the common sense of the society.

On the other hand, if a different meaning (concept) is created when a character type is used interchangeably, it will not be recognized as use of a registered trademark.

• Cases in which is not recognized as use of a registered trademark

③ Trademarks consisting of figures that are identified in appearance

＜Example＞

For example, a trademark with only a color change.

④ Other a trademark deemed identical from a common sense perspective with the registered trademark

＜Example＞

In other words, “a trademark deemed identical from common sense perspective with the registered trademark” is a narrower concept than a similar trademark because the degree of change from the registered trademark is smaller.

I’m thinking of adding some decorations to the text part of the new logo, but it’s not such a big change, so is it a “change of typeface” and will it be “a trademark deemed identical from common sense perspective with the registered trademark”?

It is difficult to judge whether a trademark is “socially recognized as identical” or not, so you should consult a patent office or a patent attorney.

Reasons why (1) or (2) should be addressed

The JPO website describes a “trademark” as follows.

1. What is a trademark?

A trademark is a mark (distinction sign) used by a business operator to distinguish its own goods/services from goods/services of others (other companies).
When we purchase goods or use services, we use a “trademark” which is a corporate mark and naming of goods and services as one indicator. As a business operator gains more trust from consumers in its own goods and services by marketing efforts, it acquires such a brand image as “reliable” or “safe to buy.” A trademark is sometimes called as “wordless salesperson” and plays an important role as front man of goods and services.
“Trademarks” are industrial property rights to protect “marks” and “naming” attached to goods and services as properties.

【Reference：Outline of the Trademark System】

In other words, as long as the logo is a “landmark” for selecting products and services, consumers who see a similar logo design that is not registered as a trademark will not be able to judge whether it is a legitimate product or not.

Therefore, if the logo to be used differs from the registered trademark, it is best to file an application for and register a new logo as a trademark.
If the design is not similar to the registered trademark, such as a major change in design, it is best to file an application for and register the trademark as soon as possible. If necessary, a preliminary search should be conducted to determine if the new logo is registrable.

Risk of a Trial for Cancellation of Non-Use

If a registered trademark is not used in Japan for three years in connection with the designated goods or designated services for which it was actually registered, the trademark registration will be canceled upon request by a third party (Article 50 of the Trademark Law: Trial for Cancellation of Non-Use).

As mentioned above, if the new logo is not “a trademark deemed identical from common sense perspective with the registered trademark” of the registered trademark, it can no longer be said to be using the registered trademark, and the trademark registration of the logo before the redesign may be canceled.

But then, if the trademark registration is withdrawn before the new logo is registered, there is a risk that a similar trademark will be applied for by a third party.

Even if the design of the registered trademark has been changed, the original trademark should not be withdrawn and should be retained at least until the new logo is registered.

Risk of infringement of others’ rights

If the new logo is outside the scope of the trademark rights of the original registered trademark, there is a risk of infringement of a third party’s trademark rights.
It is still recommended that before making any major changes to the design, you should investigate whether you are infringing on the trademark rights of others before using the new logo.

Risk of failure to control imitations

If the new logo is outside the scope of the trademark rights of the original registered trademark, it could mean that the new logo is not protected under trademark law, so that when there is an act of imitation of the new logo, the trademark rights for the original logo will not be able to control it.

A logo that has been redesigned in the hope of further business development will be counterproductive if it loses trademark rights or invites trouble. I’ll file a trademark application for the new logo design too!

Filing application in “standard characters”

If you expect to change your logo design to various fonts or character types from the beginning, or if you have not yet decided on the design to be used at the time of filing your trademark application, we recommend that you first file an application using “standard characters” which allow for a relatively high degree of freedom in design.

Conclusion

A logo design is a “landmark” for consumers to select goods and services!
It is best to avoid changing the design outside the scope of similar trademark rights.
Also, when making such changes, you should file a new trademark application.

For those who wish to apply for a new logo with the same designated goods and services as the existing registered trademark, filing an application with Amazing DX is a convenient way to do so.

If you have any other questions, such as whether it constitutes use of a registered trademark, please feel free to contact us. Our patent attorneys specializing in trademarks will be happy to assist you.