How to update an existing trademark

Did you know that you can update or alter an existing trademark in a trademark registration or application without having to file an entirely new trademark application?

In Denmark, you can alter a registered trademark or a pending trademark application if the alteration only consists of so-called “insignificant changes.” The criterion is that the overall impression of the trademark is not affected by the alteration.

With the Danish Trademarks Act from January 2019, there is no longer a distinction between whether a request for alteration concerns a registration or an application. It is the same very narrow criteria that apply, and the assessment is based on whether the overall impression of the trademark is affected by the alteration compared to the originally filed trademark.

Typical situations for trademark alterations include minor graphic refinements of a figurative trademark or logo, or when insignificant elements are altered, removed, or added.

The borderlines are best illustrated through concrete examples.

Examples of figurative trademarks, logo trademarks:

Registration no.	Original trademark	Requested alteration	Accepted or rejected
VR 1973 02847			Accepted
VR 1980 01766			Accepted
VA 1996 06219			Accepted
VR 2024 01273			Accepted
VR 2003 03793 (Maritime and Commercial High Court judgement V-110-15)			Rejected
VR 2010 01726			Rejected
VR 2009 00137			Rejected

Examples of word trademarks:

Registration no.	Original trademark	Requested alteration	Accepted or rejected
VR 2021 00965	Gavetanken A/S	Gavetanken	Accepted
VR 2021 00257	Dit X Gym	Dit X-Gym	Accepted
VR 2017 00627	IndeksPlus	IndexPlus	Accepted
VR 2005 01834	KOP&KANDE	Kop & Kande	Accepted
VR 2005 03897	TV 2 Ekko	TV 2 ECHO	Rejected
VR 2002 01843	al DENTE	Aldente	Rejected

What is possible with EU trademarks?

It is also possible to alter a pending EU trademark application or a registered EU trademark. However, a distinction is made between whether the alteration applies to a pending trademark application or a registered trademark.

There are basically three situations where trademark alterations are allowed:

1. For applications: If there is an obvious error, and the trademark alteration does not substantially alter the originally filed trademark. The latter condition is similar to the condition for trademark alterations in Denmark.

Application / Registration no.	Original trademark	Requested alteration	Accepted or rejected
EUTM no. 000546010 (BoA decision R 851/1999‑2)	TOPFLOW	TOP FLOW	Accepted
EUTM no. 018437494			Accepted
EUTM no. 000321109 (BoA decision R 196/1998-2)	RANIER	RAINIER	Rejected
EUTM no. 006013668	ELECTROLITIC BOLUS	ELECTROLITYC BOLUS or  ELECTROLYTIC BOLUS	Rejected

2. For registrations: The standards are higher than for applications. Generally, trademark alterations are only allowed in situations where the proprietor’s name and/or address are included as a small and non-dominant part of the registered trademark, and the proprietor alters its name and/or address, which they would therefore also want to alter in the trademark. The alteration must not substantially alter the originally filed trademark.

Application / Registration no.	Original trademark	Requested alteration	Accepted or rejected
EUTM no. 018004456			Accepted
EUTM no. 008640708			Accepted
EUTM no. 004988556			Accepted
EUTM no. 002701845			Rejected
EUTM no. 011058823	ROTAM – INNOVATION IN POST PATENT TECHNOLOGY’	ROTAM – INNOVATION IN POST PATENT TECHNOLOGY	Rejected
EUTM no. 009436072	SLITONE ULTRA	SLITONEULTRA	Rejected

3. The last example of allowed trademark alterations is if a better imprint, graphic quality, of the pending trademark application or registered trademark is submitted, or if an entirely immaterial element such as “TM,” “®,” or “©” is removed.

Application / Registration no.	Original trademark	Requested alteration	Accepted or rejected
EUTM no. 019013762			Accepted
EUTM no. 018264828			Accepted
EUTM no. 013350095			Accepted
EUTM no. 008755531			Accepted

What is possible with an international registration?

It is not possible to request a trademark alteration in an international trademark registration or application.

If you want to protect a trademark with an international trademark registration, which differs from an existing international trademark registration, a new international trademark application must be filed with a new national or regional basic trademark application.

Are trademark alterations allowed in the United States?

In the United States, more alterations are allowed to be made to already registered trademarks or pending trademark applications, but only for trademarks filed nationally, i.e., directly in the United States, and not via an international registration.

So-called “immaterial changes” of a trademark are allowed, where the altered trademark must give “essentially the same impression as the current version”.

Again, the borderlines are best illustrated through concrete examples:

US Serial no.	Original trademark	Requested alteration	Accepted or rejected
76607252	FREEDOMSTONE	FREEDOM STONE	Accepted
78442207			Accepted
74067728			Accepted
85047191	GOT STRAPS	GOT STRAPS?	Rejected
74136476		TURBO (word)	Rejected
73322335			Rejected

Why may it be interesting to make an alteration of a trademark?

There are two clear advantages:

1. There are fewer costs associated with a trademark alteration compared to a completely new trademark application.
2. You maintain the priority date, i.e., the date from which your protection applies.

Why are trademark alterations only allowed within very narrow limits?

With trademarks, you always have the option to file a new trademark application.

Consideration is also given to the fact that others may have obtained so-called “intermediate” rights, such as trademarks filed in the period from the original priority date until the date of the “updating” of the trademark. Intermediate rights should not simply tolerate that there are unlimited opportunities to update a pending trademark application or trademark registration.

If more extensive alterations have been made to a trademark, we, therefore, recommend to file a new trademark application to 1) obtain protection for the actual trademark being used, and to 2) prevent problems with the so-called use requirement [1] of the trademark at a later date.

[1] You must only use a registered trademark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered, cf. for Danish trademarks the Danish Trademarks Act Section 10 c(4)(1) and for EU trademarks the EU Trade Marks Regulation Article 18(1)(a).

Does your trademark need to be updated?

Do you have an older trademark registration or application, and are you using your trademark in a differing form? Are you interested in an assessment of whether it is possible to update the trademark with a trademark alteration, or whether a new trademark application should be filed instead? Do not hesitate to contact one of our trademark experts, who are ready to assist you.

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