Modify a brand
A trademark is registered for 10 years, and is indefinitely renewable. The owner may therefore be regularly tempted to modify his trademark according to the evolution of his situation, his activity... Can a registered trademark be modified? What can be modified? What can never be modified? Is it always necessary to notify the INPI?
What can be modified on a brand
Change of trademark ownership
The name of the holder can always be changed, in particular in the following cases :
- trademark assignment the trademark has been transferred to a third party who is the new owner. For more information, read our article on this subject.
- regularization of a registered trademark on behalf of a company in the process of formation : Sometimes the trademark is registered by an individual whose company has not yet been established. The filing has been made in the name of the company in the process of formation, and it must then be regularized so that the trademark officially passes to the name of the company, once it has been registered with the SCR.
Change of address of the cardholder
In the event of a change of address, it is possible to inform the INPI, so that the latter can send mail to the right address, in particular the renewal reminder if your trademark has not been filed through a representative.
Informing the INPI of your change of address is also useful to inform third parties, so that they can contact you if necessary: complaints, proposal to buy back your trademark...
Change of agent
It is always possible to inform a new representative for the trademark. This is the person, distinct from the owner, to whom INPI communications will be addressed. As a general rule, changes of representative are made during a trademark operation (registration, renewal, etc.).
Restriction of wording
It is possible at any time during the life of the trademark to delete classes of goods and services within the wording of the trademark, or simply goods or services within a class.
Class suppression often occurs either because of a third party action or at the time of renewal in order to pay less fees. Indeed, it is not uncommon for a trademark to be filed in more than 3 classes, but after 10 years the owner finds that it is not being used in one or more classes, which he then cancels at the time of renewal. He thus saves the renewal fees for each additional class beyond 3.
There are two ways to reduce the wording of a mark:
- in the event of action by a third party, by withdrawal or partial renunciation
- in the context of a renewal, indicating only the classes you wish to keep
What can never be changed in a brand
The brand name
The brand name can never be changed. It is therefore not possible to delete a mention, or to add a term or punctuation. If the use of your trademark is different from the trademark as filed, it is preferable to file a new application.
Like the brand name, the logo cannot be modified after filing, whether it is a change of colour, calligraphy or even a minor alteration. Again, to protect the logo in its new form, the only solution is to file a new application.
Extension of the wording
It is also not possible to add classes of goods or services after filing. It is also not possible to add goods or services to already existing classes. Again, this requires a new filing. It should be noted that it is entirely possible for a trademark owner to refile a trademark that is strictly identical to a trademark he has already filed for new goods or services.
To remember : It is impossible to modify a brand by changing one of its essential elements (name, logo, extension of the wording). It is therefore very important, from the moment of filing, to make sure that the trademark you wish to register is registrable and to draft an appropriate wording that will protect it in the long term. To do so, the use of a Industrial Property Attorney is still the best choice!