The Costs of Changing a Trademark

A scenario more common than you might think

Picture a company that has used the same sign for several years, without registering it as a trademark, or registering it late. All its products or services bear this sign, consumers know it and the marketing budget invested in it is substantial.

Then the day comes when a formal notice lands in the mailbox. The reason? An earlier registered trademark, identical or very similar, covering identical goods and/or services.

Understand how the protection of your trademarks and intellectual property rights works.

What changing a trademark really costs

While it is possible, in some cases, to mount an effective defence even in situations that seem hopeless, sometimes there is no choice: the sign must be changed.

In addition to the infringement damages the owner of the earlier trademark could claim, costs add up quickly:

• Search costs: finding a new sign that is available and free of legal risk;
• Registration costs: filing the new trademark with the INPI, the EUIPO or even the WIPO depending on your area of activity;
• Graphic design costs: a complete overhaul of the visual identity if necessary;
• Image cost: and this is the hardest to quantify. A new name means starting from scratch with consumers who knew you under the old sign. That harm is incalculable.

See also the case study on building a trademark strategy.

Anticipating the risk rather than suffering it

Even though I regularly assist companies with rebranding, because the sign they had chosen was similar to an earlier trademark, it is preferable to intervene beforehand to avoid reaching that point.

The availability search: an indispensable first step

Before any filing, a thorough availability search makes it possible to identify all the risks, determine whether or not they are blocking, and develop a strategy to secure the operation, or greatly limit its consequences. This includes in particular:

• checking earlier registered trademarks (INPI, EUIPO, WIPO);
• analysing similar domain names and company names;
• assessing the risk of confusion in the eyes of the relevant public.

As the saying goes: prevention is better than cure.

Using a sign without having registered it?

Do not take the risk of waiting for a formal notice. Contact me to take stock of your situation.

All case studies