Your advocate
The procedure of changing trademarks
This week Your Advocate is Barrister Omar Khan Joy, Advocate, Supreme Court of Bangladesh. He is the head of the chambers of a renowned law firm, namely, ‘Legal Counsel’, which has expertise mainly in commercial law, family law, employment law, land law, banking law, constitutional law, criminal law, and IPR.
Query
I am the owner of a private limited company and I have applied and being granted trademark registration for the logo of my business in the year 2015. However, recently, due to changes in the product types, lines and the overall strategy of the business, I have decided to change the logo of my business. In this situation, I would like to know how to change the logo of my business which is already registered.
Regards,
Enamul Rahman, Dhaka.
Response
Thank you for your query. I am willing to extend my heartfelt regards to you because of the very fact that you have already registered your trademark in 2015! It is crucially important that every entrepreneur realise the immense value of their trademarks and accordingly protect the same by registration like the way you did. In this competitive era, businesses, at times, may feel that their logo is out of date and in need of modification. Accordingly, they decide to redesign their logos by adding new designs, additional words with the view to giving a modern look to the logo and allowing people to identify the goods/services offered under the mark in a better way. For your query, certain legal provisions laid down in the Trademarks Act 2009 and Trademark Rules 2015 are relevant.
To start with, the ambit of the change to the logo needs to be identified. Changes may be small, such as rearranging the old logo elements, updating the letterings and not adding or eliminating any major element on the design. Changes may also be made in the name, address of the registered proprietor, strike out class(es) of goods, consequential amendment or alteration, cancel the entry of a trademark on the Register, etc. Such changes are usually regarded as minor and can be altered by making an application for modifying the already registered mark. As per section 53, 54 of Trademarks Act 2009 and Rule 48 of Trademark Rules 2015, you may simply apply using the relevant TM form for changing for leave to add to or alter the trademark in any manner not substantially affecting the identity or changing the class(es). The Registrar may then cause the applied mark to be advertised, allow oppositions, hearings to be made and dispose of the matter accordingly. As a result, the old/existing registered mark will be altered into the new one.
The procedure is not same where the change is not minor but a significant one. Where your new logo substantially affects the identity of the logo and materially alters the character of the existing mark, then a new Trademark Application has to be made. Your old logo shall remain registered, so long as the renewal fees are duly paid and the mark is not taken off from the Trademarks Register by the Registrar for any reason. For obtaining protection of your new logo, you shall have to make a fresh application and submit it to the Department of Patents, Designs and Trademarks (DPDT). If your business logo is substantially altered in terms of outlook/appearance and color, having little or no similarities with the previous logo, it is suggested that you make a new Trademark Application. Therefore, you are advised to take the appropriate step after determining the ambit of the change in your business logo.