A rebrand can move faster than the trademark portfolio behind it. Before a new name or logo appears on packaging, websites or sales contracts, the IP team needs to know which existing rights still matter, which new rights are needed and how the transition will be recorded across markets. The answer is rarely a single filing.
A useful starting point is to separate a change to the brand sign from a change to the business that owns or uses it. New names, redesigned logos, additional goods or services, new territories and corporate restructurings create different decisions and different recordal tasks.
Five changes, five different trademark questions
Scroll the table to read all columns.
| Business change | Question for the IP team | Likely next step |
|---|---|---|
| New brand name | Has the sign been cleared for the relevant goods and markets? | Search, local advice and a filing plan for the new mark |
| New logo, same name | What exactly do the existing word and figurative rights cover? | Compare the registered and proposed forms; consider a new filing |
| New product or service | Does the wording of the current specification cover it? | Assess a new application for missing goods or services |
| New market | Is there an effective right in that jurisdiction? | Clear and file through the appropriate route |
| Entity change | Is this the same legal owner under a new name, or a transfer? | Update the register or record an assignment as appropriate |
The Nice Classification is an administrative classification system and does not guarantee that all goods or services within a particular class are protected. Review the exact specification of goods and services covered by each registration and compare it with the planned launch. This assessment helps avoid investing in a marketing campaign for an activity that is not covered by the existing trademark registrations.
A redesigned logo does not rewrite a registered mark
A registered trademark protects the sign as represented in its registration. The trademark owner cannot simply replace the design recorded in the register with a new one. If the company also owns a separate word mark, that registration may continue to protect the name, without necessarily providing independent protection for the new graphic design.
Two distinct issues must be considered: the protection of the new sign and whether use of the earlier trademark in a modernized form can be taken into account. Under both French and European Union law, use of a trademark in a modified form may be recognized, provided that the differences do not alter the distinctive character of the registered trademark (Article L. 714-5 of the French Intellectual Property Code and Article 18 of Regulation (EU) 2017/1001).
However, this case-by-case assessment does not remove the need to consider whether a new trademark application should be filed to protect the new visual identity.
Under the Madrid System, the representation of the trademark recorded in the International Register cannot be amended. Protecting a different sign therefore requires, where appropriate, a new application, subject to the applicable filing procedure.
A workable release plan for a multi-country rebrand
1. Build one view of rights and current use
Gather all word marks, figurative marks and combined marks, together with their registration numbers, owners, territories, goods or services covered, renewal deadlines and any relevant licences. Include the versions actually used on packaging, websites, applications, contracts and marketing materials, along with dated evidence of their use. Also verify who owns the rights to the graphic elements, particularly where they were created by an agency or an external service provider. This will help distinguish registered rights from other rights that may protect the visual identity.
2. Clear the new identity before costly commitments
An identical trademark search is a useful first step, but it is not sufficient to establish the availability of a sign. A similarity-based trademark search should take into account, in particular, visual, phonetic and conceptual similarities, as well as the similarity of the goods or services concerned. It is also important to check the priority territories, company names, domain names and, where relevant, signs already used on the market. These checks should be carried out before making commitments that would be difficult to reverse, such as printing packaging or launching a marketing campaign.
3. Prioritise filings by commercial exposure
The filing strategy should be aligned with the business model: where does the company sell its products or services, under which name, for which offerings, and through which entities? A new name, a redesigned logo or an expansion of the product or service range may justify separate trademark applications.
The intellectual property attorney determines the priority protections, the appropriate national, European or international filing routes, and the relevant filing schedule. Where claiming priority from an earlier application is relevant, the six-month priority period must also be taken into account. Filing every variation without establishing clear priorities creates additional costs and deadlines to manage.
4. Manage the overlap between old and new brands
During the transition, the old and new brand identities may appear on different materials. Identify the packaging and webpages that need to be replaced, the partners or licensees to be informed, the domain names and accounts to be secured, and the evidence of use to be retained for each version.
Also ensure consistency across contractual and commercial documentation. Do not decide to abandon an existing trademark registration simply because the new brand guidelines are ready: its value, genuine use, and the risk of revocation following an uninterrupted period of five years of non-use without proper reasons must all be assessed.
5. Update ownership and portfolio records
Link the new trademark applications, the intellectual property attorney’s recommendations and decisions, and the first dated marketing and sales materials to the relevant trademark record. Also check whether the rebranding coincides with a change of company name or trademark ownership: where the legal entity remains the same, updating the registered information may be sufficient, whereas transferring the rights to another entity requires additional formalities. Appoint a person responsible for monitoring register entries, deadlines and the documents shared with the relevant teams.
Three checks before the commercial go-ahead
- The new name and logo have undergone appropriate prior rights searches covering the relevant goods or services and the target launch markets.
- Trademark filing decisions, ownership of the rights to the logo, and launch dates have been coordinated across the legal, marketing and sales teams.
- A designated person is responsible for identifying which materials still display the former brand identity and where to retrieve dated evidence of use of both versions.
Illustrative scenario: a rebrand across borders
A B2B service company uses trademark A in France, consisting of a name and logo registered together. It wishes to adopt name B, launch a new service offering and expand into a market outside France. The change of name calls for a prior rights search and a trademark filing strategy for B. The new service requires a review of the specifications of goods and services covered by the existing registrations.
The target territory also calls for an assessment of the appropriate trademark protection. The company must also verify ownership of the rights to the new logo created by its service provider. The records relating to trademark A remain useful during the transition, particularly for contracts, evidence of use and renewal decisions.
The objective is not to maximize the number of trademark filings, but to ensure that a documented decision is made for each sign and each market before the new brand identity is rolled out across all channels. This example is fictitious and does not prejudge the legal assessment of any actual case.
FAQ: trademarks during a rebrand
Do we need a new trademark application for a new logo?
To obtain a registration covering the new visual design in France, a new trademark application is generally required, as the design of a registered trademark cannot be replaced upon renewal. However, depending on the circumstances, use of a modernized version may qualify as use of the earlier trademark, provided that its distinctive character is not altered. These two issues must be assessed separately.
Can a word mark protect a new visual identity?
A word mark protects the verbal sign independently of any particular stylization. However, it does not automatically confer exclusive rights over the graphic elements of a new logo. Separate protection may be useful, particularly through a figurative trademark or, where the applicable requirements are met, through copyright or design rights.
Can we add new services to an existing EU application?
No. EUIPO says the original goods and services list can be limited, but not expanded by adding products or classes. New coverage requires a new application.
Should the old marks be allowed to lapse at launch?
There is no automatic requirement to abandon existing trademarks. Review the period during which both brand identities will coexist commercially, the relevant contracts, territories, evidence of use and renewal deadlines. The cost of maintaining the earlier registration should be weighed against the value of the existing rights, taking into account any potential risk of revocation for lack of genuine use.
Is a corporate name change the same as a trademark assignment?
No, provided that the same legal entity remains the owner of the trademarks. A change of company name may require an update of the trademark owner’s details, depending on the relevant intellectual property office. However, if the rights are transferred to another legal entity, the transfer must be formally documented and the appropriate recordals made. The supporting documents and applicable procedures vary depending on the office concerned.
What if the new logo was created by an agency?
Before using or registering the new logo, review the contractual provisions and verify ownership of the copyright in the graphic design. Payment for design services does not, in itself, constitute an assignment of all exploitation rights.
Keep the legal portfolio aligned with the live brand
A well-organized evidence file enables the intellectual property team to answer a specific question: which documents cover this trademark registration, this period, these goods or services, and this market? IPzen allows documents associated with trademark records and related matters to be centralized. This organization makes it easier to retrieve evidence and identify potential gaps, without prejudging its evidential value. To discover how this works, request an IPzen demonstration using a trademark from your own portfolio.