About the author:
Hannah Burrows: Hannah is a trade mark attorney and associate at Appleyard Lees. She assists with a variety of trade mark matters – including assisting clients with devising a strategy for their trade mark portfolio, obtaining trade mark protection and trade mark maintenance. She also assists clients with obtaining registered design protection and dealing with company name disputes.
Hannah works with many start-ups as well as multinational companies in a wide range of sectors. She has a particular interest in the fashion, beauty and luxury sector and has worked with clients in these areas to expand their scope of IP protection.
In the past few years, major luxury fashion labels have moved from fanciful logos, with significant stylisation being stripped back to simpler fonts.
British luxury fashion house Burberry recently rebranded under their new creative director, fellow Yorkshire person
Daniel Lee, who has dispensed of the sans-serif font used for the previous logo.
Burberry have also brought back their Prorsum logo with a more refined design.
Prorsum, along with Burberry Brit and Burberry Sport, was a diffusion brand of Burberry. Burberry Prorsum was absorbed into the main collection in 2016 but it now seems that Daniel Lee is bringing this line back with the new logo.
Burberry has sought registration in at least the UK and EU for this updated logo.
Registering a word mark provides a brand owner with the broadest scope of protection to enforce against third parties using an identical or similar mark. More often than not, when brands create a logo of their house brand, there are additional elements, whether it is stylisation, a distinctive colourway or a device element. When these elements are added, this certainly merits additional trade mark protection for the logo version when considering validity and enforceability of a trade mark (discussed further below). But with brands moving towards logos which consist of relatively simple fonts – which appear to focus less on standing out from the crowd and more about blending in – it presents the question of whether these logo registrations are actually adding anything more than trade mark protection of the word mark.
Interestingly, Burberry does not appear to have sought trade mark protection, at least in the UK and EU, for the new logo in the updated font.
Importance of updating protection
Despite this question, brands should bear in mind that a new logo may warrant a new trade mark registration when considering the validity and enforceability of their trade mark rights.
In the UK and EU, after five years post registration, a trade mark becomes vulnerable to a non-use cancellation action if it is not used in relation to the goods and / or services covered by the registration in the respective territory. Section 46(2) of the Trade Marks Act 1994 and Article 18 of the EUTMR 2017/1001 both state that genuine use includes:
“..use of the trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor”.
As such, when brands are considering updating their logos, they may wish to seek advice from a trade mark professional to assess the position as to whether updated protection is required.
Maintenance of old logos
Trade mark registrations have the potential to last forever, however, they must be renewed every 10 years from the application date, at least in the UK and EU. Failure to renew will result in the registration being declared ‘dead’. Even if a brand has launched a new logo, and the old one is less frequently used, it may not necessarily mean that they should allow the old one to lapse. The second-hand marketplace is booming, driven by a collective awareness of our need to be more conscious of shopping sustainably.
Case law has been mixed on whether second hand sales are adequate to demonstrate genuine use of a trade mark. In the UK High Court decision of Aiwa Co Ltd v Aiwa Corporation, the court held that “it is not possible to come to a general conclusion as to whether all second-hand sales of branded goods amount to genuine use of a mark for the purposes of revocation or preserving the mark in opposition proceedings. Each case will depend on its own facts”. In Joined Cases C–720/18 and C–721/18 Ferrari SpA DU, the Court of Justice of the European Union held that second-hand sales were adequate to demonstrate genuine use of Ferrari’s ‘TESTAROSSA’ mark – the fact that the goods were “high priced luxury goods” played a factor in the decision. Some similar considerations may apply to high priced luxury fashion goods, but we are yet to hear the courts’ views on this. Given this, there may be some merit in fashion brands retaining older logos, particularly given the second-hand luxury resale market is increasing in popularity, and vintage pieces (which would inevitably feature older logos) are highly sought after.