Keeping Up with the Evolution of Your Brand

Is your brand evolving? How far can you go before you need a new trademark registration?

By Mariya Nikolova Trademarks | Designs Attorney IP Hills | Ipsilon Group

Brands evolve alongside the businesses they identify. Logos are restyled, colour palettes are adjusted, and slogans are refined to reach new audiences. But once a trademark has been registered, how much freedom does a trademark holder have to refresh it without losing protection? Must every variation constitute a new registration?

An example of brand evolution: the Shell logo

Since 1900, Shell’s symbol has evolved from a naturalistic seashell into a clean, minimalist form in bold red and yellow. Looking at these successive versions, one can ask: did each version really require a new registration?

The legal framework: Flexibility within limits

EU trademark law recognises that brands are living assets. Under Article 16(5)(a) EUTMD and Article 18(1)(a) EUTMR, use of a trademark in a slightly different form still qualifies as genuine use, provided the changes do not alter its distinctive character.

This principle offers some flexibility, allowing businesses who own a trademark registration to refresh their trademark without automatically losing the protection offered by their existing registration. The trademark owners can continue to enforce their rights and defend against infringers, while avoiding a non-use challenge, even if the version in use is not identical to the registered mark.

The core question: Has the distinctive character changed?

The core question is whether the updated version of the trademark keeps the same distinctive character. Put simply: would the average consumer still see it as identifying the same business?

If consumers would still associate the updated version of the mark with the same business, then the existing registration will normally continue to provide protection. But when the updated version changes the overall impression so much that the public would see it as a new mark, the old registration will not protect it.

The EUIPN Common Practice 8 (CP8) sets out how to make this assessment through a two-step test.

Step 1: Identify the distinctive essence of the registered mark.

The first step is to determine which elements give the registered mark its distinctive character and to what extent. CP8 focuses on three aspects:

• Distinctiveness: Which elements indicate commercial origin rather than merely describing the goods or services?
• Visual dominance: Which element stands out most to the consumer, through size, colour, or position?
• Interactions: How do the different components of the trademark work together? Do they reinforce each other or form a new unit with a different meaning?

Step 2: Compare the updated version with the registered form.

Once the distinctive essence is identified, the question is whether the updated version used in trade still conveys that essence. The assessment focuses on any added, omitted or modified elements and considers the overall impression from the perspective of the average consumer.

Importantly, a mark that is strongly distinctive can tolerate more variation; a weak or descriptive mark is vulnerable even to modest changes.

When is a change still covered by the existing registration? Additions, omissions, and modifications

According to the CP8, there are three main ways a mark can change, namely, with additions, omissions, and modifications.

1. Additions

When an element is added, the impact depends on its distinctiveness. Adding a weak or non-distinctive element, such as a descriptive term (e.g. “BIO,” “LTD,” or “since 1980”), simple background, common shape, or basic colour normally does not affect the mark’s distinctive character. For example, in the case of AINHOA the registered mark was “AINHOA”, and the updated version in use, “AINHOA BIO”, was still covered by the registration, since “BIO” is descriptive.

However, adding a new distinctive element that interacts with the existing mark can alter its distinctive character. In the TACK  case, for example, the addition of the word “CEYS” changed consumer perception, as it formed a new combined expression that required a separate registration.

2. Omissions

When an element is removed, the effect depends on whether that element was distinctive. Omitting something purely descriptive usually does not affect protection. For example, in the case of Diacol Portugal, the omission of “Portugal”, does not affect protection. However, removing a distinctive element can fundamentally change the identity of the mark. For instance, when “TV” was dropped from “FASHION TV”, leaving only “FASHION,” the distinctive character was altered because “TV” was what made the registered mark recognisable.

Special caution is needed when a mark’s distinctiveness comes from a combination of otherwise weak elements. In such cases, removing even a seemingly minor component can alter the distinctive character of the sign as registered.

3. Modifications

Changes in layout, typeface, or colour are usually acceptable variations as long as the mark remains recognisable. For word marks, typeface or capitalisation can vary freely if the word itself is still legible and identifiable. For figurative marks, refreshing the design is acceptable if the distinctive shape or symbol is still recognisable. But if the mark’s distinctiveness mainly comes from the design itself, even small changes can alter its distinctive character. Purely figurative or weak marks are especially vulnerable. In composite marks, if the figurative part carries most of the distinctiveness, changing it can be decisive. When both verbal and figurative elements contribute to distinctiveness, both must be preserved.

Back to the Shell example: How much change is too much?

Looking back at Shell example, we can assess its evolution using CP8’s two-step test: first identify which elements give the registered mark its distinctive character, and then determine whether any addition, omission, or modification in the updated versions has altered that character.

The 1900 registration depicted a realistic scallop shell viewed from above. The 1904 version introduced a symmetrical, upright shell with radiating lines, representing a complete redesign rather than a mere modification. Between 1904 and 1930, the shell was gradually refined through minor adjustments to its outline and detailing, which would likely have remained covered by the 1904 registration.

In 1948, the addition of the bold word “SHELL”, the red and yellow colour palette, and the simplified outline shifted the marks’ distinctive character, justifying a new registration. The 1955 and 1961 updates involved only minor modifications to the lines, shadows, and colour, including a red background, so they would likely have remained protected under the 1948 registration.

The 1971 redesign introduced a cleaner, geometric shell form framed by  bold red border, red radiating lines, and repositioned wording. Although the new design remained somewhat recognisable, the changes went beyond the acceptable modifications, and filing a new registration was the safer option. The 1995 update merely refined the font of the word element and would, therefore, have been covered by the earlier 1971 registration.

In 1999 the word “SHELL” was omitted, leaving only the shell symbol. Under CP8, omission of a distinctive element can alter a mark’s distinctive character, but, in this instance given the word element’s lower placement, and the dominance of the shell design, the omission would be an acceptable variation. The 1999 mark would likely have remained protected by the 1971 registration, though a separate figurative filing was a prudent step to ensure clarity and enforceability.

Author’s opinion

Brand updates are a natural part of business development. The law allows reasonable evolution, but not reinvention under the same registration. If an update is significant, it would be wise to file a new trademark. The trade-off is that the new filing loses the earlier registration date, which can be critical for enforcement against later-filed marks or potential infringers.

At the same time, not registering the updated version carries its own risk. If the new version differs significantly from what is registered, it may no longer count as “genuine use.” That could make the registration vulnerable to a non-use challenge and weaken your ability to enforce it in disputes.

The deciding factor is how consumers perceive the change: if the update could be seen as a rebrand, a new filing is usually the safer option to maintain enforceability and proof of use.

Sources:

CP8 Common Practice (https://www.tmdn.org/publicwebsite/#/practices/1819724)

EUIPO Guidelines (https://guidelines.euipo.europa.eu/2302857/2227312/trade-mark-guidelines/6-2-use-of-the-mark-as-registered-or-of-a-variation-thereof)

23/09/2015, T‑426/13, AINHOA, EU:T:2015:669 – appeal dismissed, 16/06/2016, C‑611/15 P, AINHOA, EU:C:2016:463

10/10/2018, T‑24/17, D-TACK / TACK et al., EU:T:2018:668

24/01/2017, T‑258/08, DIACOR / DIACOL, EU:T:2017:22

13/05/2020, R 1221/2018‑4, Fashion TV