the new Google logo - trade mark issues?
Ilse du Plessis
Google recently changed its logo. Not radically, but in ways that many people may not have even noticed. In an article that appeared in the publication Tech Central – “Yes Google has a new logo – but why?” - the author, Per Mollerup , says that the new logo uses the same colours of blue, red, yellow and green, yet has a “custom-designed geometric sans serif typeface”. According to Mollerup, the change is about functionality, in that the new version is “a logo that can be produced and seen in smaller sizes than before”. It’s also about simplification, with the new logo displaying “childlike simplicity and playfulness”.
Google has long been an interesting trade mark. The company has for many years flouted basic branding and trade mark rules by changing its logo on a regular (seemingly daily) basis – we discussed the legal issues that arise from this some time back in an article entitled “The Google doodle and other fluid trade marks”. The company has also managed to fight off an attack based on the claim that the word “google” has become generic, and therefore no longer functions as a trade mark – the US court that heard this case ruled that, even though “google” has become an accepted word for the act of searching on the internet, the name Google still designates a particular search engine.
So what legal issues arise when you change your trade mark? And does it make a difference if the change has no effect on the brand name itself, but simply relates to the font or the general appearance of the trade mark?
Whenever you contemplate a change to your trade mark, you need to consider whether you will in fact still be able to use the new trade mark without infringing the trade mark rights of others. This may well require you to do trade mark searches – the less radical the change, the less likely it is that you will need to do searches. Although fonts and colours can play a very important role in the overall appearance of a trade mark, it would be surprising if Google deemed it necessary to do searches for the new logo. The reason for this is that the new logo barely changes the overall appearance of the old, and presumably registered, Google logo. Searching would certainly have been quite a task because, as a global brand, Google would’ve had to do searches worldwide.
But what about trade mark registration – do you need to register a trade mark that’s extremely similar to one that’s already registered? Registration can be an expensive and onerous task if you’re a global brand, although Google, as a US company, would be able to the use the international registration system (Madrid Protocol) in order to get registration in much of the world. It would also be able to use the regional registration systems that apply in the EU (the Community Trade Mark), French-speaking Africa (OAPI), and much of English-speaking Africa (ARIPO – although the validity of ARIPO registrations in some member countries is questionable).
I suspect that most trade mark lawyers would recommend that if you make even a relatively minor modification to your logo, you should register the new trade mark. There are two reasons for this.
The first is that you want to be absolutely sure that if anyone copies the new logo, you will be able to sue them for trade mark infringement. In a case like the new Google logo, the concern would not really be that a third party might use a trade mark that’s similar to the word “google”. It would rather be that someone might use a trade mark that looks confusingly similar to the new Google logo, through the use of similar colours and fonts.
The second reason for registering the new logo is that you don’t want your trade mark registration to become open to attack for non-use. The law on non-use is that the use of a very similar mark will normally be sufficient, which means that the use of the new Google logo might well count as use of the old Google logo, thus keeping the registration valid.
But is this chance worth taking? I think not. The courts can be very strict and they’re not always consistent. For example, in a recent UK case, evidence of use of the trade mark Lipice was not accepted as proof of use of the registered trade mark Lip-Ice, with the hyphen being seen as an important feature. Yet, in an EU case involving Levi Strauss, evidence of use of a trade mark comprising a red tag with the name “Levi’s” on it was accepted as proof of use of the registered trade mark, which was for the red tag on its own. And, in another EU case, evidence of use of a spectacles logo with the word “Specsavers” superimposed on it was accepted as proof of use of a trade mark registration for the spectacles logo on its own.
Assuming that you do opt for registration, there’s another question – do you file the new logo in black and white or in colour? Although many people feel that a black and white trade mark registration is sufficient to cover any eventuality, the importance of the colours in the Google logo – as well as recent developments in the EU following on from the Specsavers case - suggest that trade mark owners might often be safest filing separate applications, one in black and white, and one in colour. This, of course, will lead to a significant increase in costs.
So, a simple decision to tamper with a logo can have significant trade mark consequences and it’s best to get professional advice very early on.
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