Changes (redesign) of the logo must be registered as a trademark. When the logo that we protect has been refreshed, it is convenient to register the substantial changes in the design of the trademark, otherwise there is a risk of cancellation for non-use. If the logo is very different from the one initially registered, it requires a new protection. On the other hand, if the logo has not changed too much, and its modifications are secondary, registration is not necessary, since the differences between both are not representative and the protection of the first one covers the new logo.
Article 166 of Decision 486 of the Commission of the Andean Community establishes that: “It shall be understood that a trademark is in use when the products or services that it distinguishes have been placed in commerce or are available in the market under that trademark, in the quantity and in the manner that normally corresponds, taking into account the nature of the products or services and the modalities under which they are commercialized in the market.
A mark shall also be considered used when it exclusively distinguishes goods that are exported from any of the Member Countries, as provided in the preceding paragraph. The use of a trademark in such a way that it differs from the form in which it was registered only as regards details or elements that do not alter its distinctive character, shall not cause the cancellation of the registration for lack of use, nor shall it diminish the protection that corresponds to the trademark”.
The Superintendence of Industry and Commerce, in Resolution No. 89018 of December 22, 2016, analyzed the mentioned article as follows:
“…As can be seen, Article 166 enshrines two fundamental requirements to determine whether the trademark has been used by its owner or by a third party authorized by the owner, namely: The first of them, the quantitative one, is subdivided in turn into two: the first, related solely and exclusively to the intensity of use of the trademark, which is reflected by sales invoices or other documents that give certainty of the sales volumes of the products or services identified by the trademark. The second criterion, linked to the quantitative one, is the modality of commercialization of the products.
Thus, the marketing channels used by the trademark holder to make available the products or services identified by the trademark are studied and whether or not they would be adequate for the type of products or services.
The second element or fundamental requirement is the qualitative one, which refers to the use of the trademark as registered and is derived from the third paragraph of article 166.
In this order of ideas, the trademark must be used in the form in which it was registered and, in case of variations in the form of use, the differences can only be as to details or elements that do not alter its distinctive character?”
Within Process 180-IP-2006 of December 4, 2006, the Court noted with respect to this part of the rule that:
“The third paragraph of the studied norm, on its part, warns that if a trademark is used in a different way from the way it was registered, it may not be cancelled for lack of use or the corresponding protection may be diminished if such difference is only as to details or elements that do not alter the distinctive character of the trademark” (emphasis added to the text). So if your logo has undergone changes… Contact us!