When the mark is used differently from the registration: what to do first
When the sign you use in trade differs from the mark as registered, the first task is not redesign. It is comparison. Does the version in use still carry the same distinctive character as the version on file? Under Regulation (EU) 2017/1001 (EUTMR), only use that preserves this character counts as use of the registered mark. Everything else follows from that single answer.
The legal basis
European Union trade marks are protected as registered, under Regulation (EU) 2017/1001 (EUTMR). Use of a mark in a form that alters its distinctive character does not count as genuine use of the registered version. This distinction is the starting point for every question that arises once the sign on the market and the sign on the certificate no longer look the same.
What changes in practice
A mismatch between the certificate and the market has three consequences. It weakens the position if someone applies for revocation on non-use grounds. It complicates enforcement, because the specimen shown to an infringer may not match the registration. It also complicates any customs recordal, where the filed specimen has to match the mark as actually used.
| Type of change | Practical effect |
|---|---|
| Colour or minor stylistic adjustment | Usually preserves the distinctive character |
| Added word or figurative element | May create a separate sign requiring its own filing |
| Narrower or wider goods description in practice | Use may not support the full registered scope |
| Full logo redesign | Requires a fresh check of whether the core element survived |
What to do first
- Pull the registration certificate and place it beside the current use, side by side — owner or in-house counsel.
- Record every use with date and channel, from packaging to invoices — marketing team.
- Assess whether the distinctive character of the registered mark survives the change — trade mark counsel.
- If it does not survive, prepare a fresh filing for the version actually used — applicant.
- Keep the dated evidence file ready, in case a cancellation action follows — owner.
Who decides, and on the evidence
Non-use revocation applications are decided by the EUIPO Cancellation Division. Infringement and invalidity disputes go to the competent national court instead. In both forums, the decision rests on the specimen submitted and on dated evidence of actual use. The burden of showing genuine use sits with the owner, not with the party challenging it.
If your situation differs
- If the change is limited to colour or a minor stylistic detail, the existing registration usually still covers it.
- If a word or figurative element was added, treat the new sign as a candidate for a separate filing.
- If you rely on customs enforcement against counterfeit goods, the specimen recorded with the authorities must match the mark as used, under Regulation (EU) No 608/2013.
- If a separate deadline is already running in a patent matter, read When the deadline for appeal has started explained.
- If a technology contract has just added a security clause to the order form, see When a security addendum arrives with the order form.
- If a digital asset was reclassified around the same time, see When a token is classified differently than expected and.
Sources and limit
This page does not decide whether one specific altered use preserves distinctive character. That depends on the exact sign, the market it operates in, and the evidence file behind it. It does not cover national trade marks outside the EU framework, and it states no fee or price.
For a jurisdiction-specific view of what can be established from a registry rather than from a single case file, see Asset in Luxembourg and the deadline.
Checked on 10 February 2025. Primary sources: Regulation (EU) 2017/1001 (EUTMR); Regulation (EU) No 608/2013, both via EUR-Lex.
Related situations
Related reading: What to do first in this situation and what happens next when the filing party is not the registered owner.
A short first call helps most at this stage, before any filing decision is made. We reply during business hours within minutes, and a written view of the position follows within one business day.
Frequently asked questions
What is the first step when the mark is used differently from the registration?
Compare the certificate against current use and assess whether the distinctive character has survived the change. Only then decide whether a fresh filing is needed.
Which deadline is already running?
The statutory non-use period starts running from the date registration completed, under Regulation (EU) 2017/1001 (EUTMR), regardless of any later change in how the mark is used.
Who decides, and on what evidence?
The EUIPO Cancellation Division decides non-use revocation cases; a national court decides infringement and invalidity disputes. Both rely on the specimen and on dated evidence of actual use.