Dipl.-Ing. Josef Bockhorni
The modernisation of trademarks has always been a sensitive issue as the risk is always involved that after expiration of five years, the modified modernized and used representation of the trademark is not acknowledged as relevant use of the old registered mark so that the latter would become vulnerable to cancellation because of non-usage. This question has been debated frequently in the last few years as the European Court of Justice met a surprising decision in an Italian case in 2007 according to which the old mark must be used even after a slight modernisation or modification when the new version of the mark is registered in addition to the old version in the trademark register – which is certainly always recommendable. In October 2012, the European Court of Justice clarified the matter with a decision (file no. C-553/11) which now allows the trademark owner to exclusively use the modernized trademark without running the risk of endangering the old registered mark. Precondition for that is, however, that both marks are considered as one and the same mark by the public.
Author: Dipl.-Ing. Josef Bockhorni (Patent Attorney), Update 1/2013
Patent Attorneys and Lawyers Bockhorni & Kollegen
Munich/ Germany
www.patguard.de
