Some people struggle with which type of trademark they should apply: Words? Designs? Should you apply separately or a combination will be just fine?
Actually it all lead to the same situation; when using the different forms or adding some note on a registered trademark, will it still be considered as using the registered trademark?
Basically, when using a registered trademark, you should not change the elements or adding the extra design to the trademark. But according to the trademark law, if it doesn’t affect the identity of the registered trademark according to general concepts in the society, (this mean that the trademark you actual use can leave the same impressions, people can understand that you are not using a new, irrelevant trademark) it can be considered to constitute use of the registered trademark.
Why should you care and what is the difference if the trademark that you actually use is not considered as your registered trademark?
If the trademark you actual use is not taken as the registered trademark, it means that you are not using your registered trademark at all, and if the period has been continuous for three years, ANYONE can file the application to revoke your trademark registration. Or after the form changed or you added an addition note, the trademark you use become an identical or similar trademark to other trademark and likely course confusion to the relevant consumers, the person who hold the other trademark can file the application to revoke your trademark registration.
What should you do?
The most important thing after you successfully registered your trademark is managing your trademark.
There are some traps if you change the Forms or add additional notes to your registered trademark. You never know that at some time that someone may file the application to revoke your trademark registration. Instead of getting in the risk of your trademark registration been revoked, the best way is to file a new trademark application for the mark that you are actual use when you need to change the original design of the registered trademark.
And if you are planning to apply for a registration and weighing about how to apply, my suggestion is that it should follow your plan for your brand, for example, your trademark is a combination of word and designs and you also need to use part of trademark independently, like only using the word part printing on the container of your product, then you should apply for both: a combination trademark and a word trademark. There are many cases that the trademark holder only used part of the trademark, later their registered trademark had been revoked due to not using the registered trademark for continuous three years.
What kind of changing or adding you can make?
In real cases, should the actual use trademark regarded as your registered trademark are considered on a case-by-case basis, every case are different.
But the Taiwan Intellectual Property Office do give some guideline of how you should use your registered Taiwan trademark; here are some example from the Taiwan Intellectual Property Office shows about the actual use trademark( after changing or adding note) can still be considered as using your registered trademark:
When the color of a trademark is just in black and white and the color of the trademark is not main distinctive element and using other color will not affect the identity of the registered trademark, under these circumstances, using other color can still be consider using your registered trademark.
Here are some examples from the Taiwan Intellectual Property Office shows about the actual use trademark( after changing or adding note ) will NOT consider as using your registered Taiwan trademark:
1. Color
For a trademark that is not in black and white, if the color of the trademark is the main distinctive element and using another color will change the identity of the trademark, then using the different color of the trademark will not be consider as using the registered trademark.
If the trademark is a combination trademark, you should use the whole part of the trademark. When you only use part of the trademark, it will not be taking as using your registered trademark. The below example showing that the actual use trademark only use part of the element from the registered trademark and not been considered as using the registered trademark.
If trademark holder needs to use part of the element from the registered trademark, the best way for the holder is to file a new trademark registration.
