IP SPOTLIGHT 17 August 2020

TIMELY REMINDER TO UPDATE TRADE MARK REGISTRATION WHEN MAKING A BRAND REFRESH

Periodic brand refreshes offer several benefits for a business such as staying relevant, distinguishing your business from your competitors, realignment with new or changing values, products or services and reconnecting with customers. Every successful business will need to refresh their brand from time to time. Usually, the essential ‘look’ of the brand is retained, with minor alterations, so that the brand still remains recognisable. For example, the following logos show the changes The Body Shop brands have undergone from the early 80s to the present day.

In Australia, a trade mark registration may be cancelled if the owner has not used the trade mark in relation to the goods and/or services for a continuous period of three years. Periodic brand refreshes are taken into account - the Registrar may decide that the owner (or an authorised user) has used a trade mark if it can be established that the owner (or the authorised user) has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark. In this case G. & K. Fine Foods Pty Ltd was unable to convince the Australian Trade Mark Office that their use of DELUCA’S since 2015 was effectively a continuation of use of their previous trade mark BY DELUCAS. Simple changes as part of the brand refresh, which removed BY and added an apostrophe to DELUCAS to change it to DELUCA’S, were considered sufficient for the Hearing Officer to conclude that the trade marks were not substantially identical and that use of DELUCA’S was not use of BY DELUCAS. The trade mark registration for BY DELUCAS has now been cancelled. If a business has decided that there are good reasons to undergo a brand refresh, then we recommend that they also consult a trade mark attorney at Wrays to ensure that their existing trade mark registrations remain protected against cancellation for non-use and that the new branding is appropriately protected with additional trade mark registrations, particularly if the rebrand is associated with the release of new goods and/or service offerings.

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A recent decision by the Australian Trade Marks Office, G. & K. Fine Foods Pty Ltd v J DeLuca Fish Company, Inc. [2020] ATMO 97 (2 June 2020) is a timely reminder to businesses that a careless brand refresh may leave them vulnerable to cancellation of their trade mark rights unless they take steps to update their trade mark registrations along with their brand. G. & K. Fine Foods Pty Ltd was a gourmet food wholesale and distribution company established in the late 1980s. In 2009 it started using the trade mark BY DELUCAS in relation to packaged food products such as pasta-based meals and it registered this trade mark in respect to a wide range of food products. In 2015, the business underwent a brand refresh – it phased out the use of the word ‘BY’ and the updated trade mark became DELUCA’S. The essential element DELUCA was retained but these minor changes accompanying the brand refresh had significant consequences for retention of the registered trade mark.

MARY TURONEK Principal

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