But what if I change a letter? Understanding the limits of brand differentiation

Tom Griffin, Solicitor

Can you avoid trade mark infringement by changing a letter or two? It’s a common assumption that subtle changes to a name or logo are enough to avoid legal issues. However, when it comes to trade marks, the analysis goes for beyond surface-level differences.

Often, a business will ask whether changing a letter, adding a word, or making another minor tweak will be sufficient to avoid trade mark infringement. The response that they will receive is that, unfortunately, it is not that simple.

Where a brand name, logo, or other mark is similar to a registered trade mark, rather than the focus, when assessing trade mark infringement, being on the quantitative differences, it is on the overall impression created by the marks and whether the fictious average consumer is likely to think that the brands are the same or connected. This involves a multi-factorial, global assessment of numerous factors, including the similarity (aural, visual, and conceptual) of the marks, the similarity of the relevant goods and/or services, the distinctiveness of the earlier mark, and all other relevant circumstances.

In short, whilst you may feel like you have finessed the trade mark system by making a minor change (e.g. “Nykey” not “Nike”), you may still (and, in the case of that example, will) be building a brand that sits too close to another trader’s rights. That can have significant practical, commercial consequences if you have invested time and money into that brand. No-one wants to have to re-brand after 6 months…

If you have any queries in relation to trade mark maintenance or exploitation, please contact a member of our intellectual property team on 0161 832 3434, or email on [email protected].