Anyone who registers a trademark shall use the trademark sooner or later in accordance with use-requirements. If a trademark is not used, or if genuine use of a trademark cannot be proven in case of a conflict, the trademark is worthless from a legal point of view, and also the commercial value will be impaired. In the worst-case, the trademark will be cancelled.
What happens if a registered trademark is used in a different form? We all know, the times they are a-changing, as Bob Dylan sings, and of course the look of trademarks changes over the time, for example, for marketing reasons. In the courtroom, the question may arise as to whether changes to a trademark are legally relevant: does the used form of the trademark constitute use of the registered trademark or is the used trademark a different trademark?
A monster is not a monster
A recent decision of the German Federal Patent Court (Bundespatentgericht) illustrates the potential problems concerning the trademark "Monster" (the energy drink trademark). The German Federal Patent Court found that the EU trademark "MONSTER" (EUTM 002 784 486) had not been used for energy drinks. The judges decided that consumers would not perceive the use of the (figurative) term "MONSTER" with the claw logo as a use of the registered word mark "MONSTER". Here is a picture from the decision showing the sign "MONSTER" and the claw (page 26)
For this reason the Energy Monster lost this case against another Monster, see decision of August 23, 2024 in case 30 W (pat) 78/21 - available here.
Therefore, never change your trademark in the spirit of the times without consulting a trademark attorney beforehand. And do not forget to consider searching for possible prior rights in advance, before launching a new sign.
Metrix is not Matrix
A similar problem can occur when changing a company, trade name or store name. The legal protection and priority of such name (under German law: § 5 German Trademarks Act) and the broad protection (see Sascha Abrar, Kluwer Trademark Blog) can be lost by making changes to the name. For example, the Federal Court of Justice (Bundesgerichtshof – BGH) once decided that Metrix is not Matrix. By changing the name of a company from Matrix to Metrix, the company lost the long-existing right to the name “Matrix” (case No I ZR 12/72). Never change the name of your company without consulting a lawyer.