Is it Okay to Modify Your Registered Trademark in Australia?

1 March, 2024

Owning a registered trademark is a valuable asset for any business in Australia. It allows you to distinguish your products and services from those of your competitors and helps to build brand recognition. However, questions may arise about how much you can modify your registered trademark while still maintaining legal protection.

Can I Modify My Registered Trademark?

This is a common question, and the answer is not always straightforward. Generally, it’s recommended to use your registered trademark exactly as you submitted it during the application process. This ensures you receive the full legal protection for your brand.

However, minor modifications might be acceptable as long as they don’t significantly alter the overall impression of the trademark. IP Australia, the government agency responsible for trademarks, considers various factors when evaluating modifications, including:

• The “essential features” of the trademark: This refers to the elements that make your trademark unique and recognizable. For example, in a combined trademark consisting of a logo and word, the essential features might be the specific design elements of the logo and the unique combination of words.
• The overall resemblance between the registered and modified versions: Even if minor changes are made, the modified version should still be readily recognizable as the original trademark.

The Importance of Caution and Seeking Legal Advice

While the information above provides a general overview, identifying acceptable modifications can be complex. Two court cases illustrate this point:

✔ In PB Foods Ltd v Malanda Dairy Foods Ltd [1999] FCA 1602, the Federal Court held that use of CHILL constituted use of CHOC CHILL in relation to flavoured milk, on the basis that CHOC was descriptive. You can read the details of the case at this link.

✔In PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd [2021] FCAFC 128 at [162], the Court determined that they were not substantially identical and that use of one could not be considered to be use of the other.You can read the details of the case at this link.

✍The lesson? While minor changes might be tolerated, it’s important to exercise caution. Here are some key points to remember:

☑ Always strive to use the trademark as registered.
☑If minor modifications are desired, ensure they don’t significantly alter the trademark’s essence.
☑For added flexibility, consider registering distinctive words separately as trademarks.

Remember: This information is for general guidance only and does not constitute legal advice. For specific situations and trademark-related queries, always seek professional legal counsel to ensure you comply with Australian trademark laws and protect your brand effectively.

Need assistance with your trademark registration? Whether you’re in Australia, New Zealand, or beyond, Maygust Trademark Attorneys are here to help. Don’t navigate the process alone – our qualified attorneys can guide you every step of the way.