A few years ago, seemingly every single fashion brand did some rebranding and changed its logo to a geometric sans-serif design. Some brands changed even more. Two highly discussed changes are at the centre of this article: Yves Saint Laurent (kind of) dropped the Yves and became Saint Laurent. Hedi Slimane took over from Phoebe Philo and turned Céline into Celine.
All these brand names function as trademarks as word or figurative marks. The purpose of a trademark is, to serve as a reference to the proprietor of the marked goods or services. Consumers rely on steadily recognizable trademarks to make rational buying decisions. Brands need instantly recognizable trademarks without interruption of their accumulated goodwill, which above-all decided the IP’s worth. But what happens, if you change your trademark in a fit of zealous rebranding? Do you lose trademark protection for you old mark? Do you have to re-register? Is a preservation of rights possible?
From women for women
Let us start with exhibit number one: Celine. Céline Vipiana founded the trés classique French brand in 1945. It achieved its zenith of glory during the ten-year reign of Phoebe Philo.This incarnation of the French brand achieved a cult following and now even has in memoriam Instagram accounts with ten thousands of followers. There you will not only find pictures of the now iconic fur-lined sandals, but also campaign pictures with American writer Joan Didion (who makes anything she touches and features in instantly relevant to anything, anywhere) and photos of model Daria Werbowy, who perfectly embodies the enlightened strong image of the Celine woman.
Old Céline to New Celine
Then, in 2018, came Hedi Slimane. It was already clear with his appointment as creative and first artistic and image director of the company that the brand’s consistently women-who-have-eaten-once-in-their-lives friendly attitude would be over. Hedi Slimane channelled not women’s comfort, but male youth culture. The result: grunge-meets-formal. To quote Alex Rakestraw from Highsnobiety in his review of Slimane’s first show for Celine: “Tailoring for men. Glamour for women. Filter through a ’70s rock club and paint it black. It was Slimane’s tried-and-true look, sent from Dior by way of Rive Gauche: leather jackets, biker boots, neutrals, slim fits, the occasional metallic detail.“
YSL, now Saint Laurent
Céline was not Hedi Slimane’s first change. In 2012, Hedi Slimane began his role as creative/artistic direct at Yves Saint Laurent and he immediately ensured a lasting legacy. He rebranded the house’s ready-to-wear collection (but not its couture offerings) as Saint Laurent and moving the design headquarters to Los Angeles. The rebranding move was controversial enough, but it also lead to still-ongoing confusion over what exactly was rebranded. Lots of media thought the whole house was renamed. It does not help that shops used “Saint Laurent Paris”, but kept the YSL. Some product where even branded both “YSL” and “Saint Laurent”.
The Great Re-Blanding
That change was followed by a greater simplification transition in the fashion world. Around 2017 and 2018, heaps and heaps of brands changes their logos, going serif-less, minimalist, bold. Diane von Furstenberg, Calvin Klein, Balenciaga and Burberry come to mind in addition to Céline and Saint Laurent. While some grieve the older, long iconic looks, there are some serious benefits to minimalist brand design. First: minimalism with striking monochromatic letters leads to memorability. The imprint in the brain is just bigger. In addition, brand cohesion is much easier to achieve.
At last, some law
Coming back to Céline: as his first offence act in office, Slimane axed Céline’s accent aigu. This is admittedly a very slight change to the brand’s name. But as such, it’s a suitable start for the legal part of this article.
If designed and marketed effectively, a brand name and/or logo serves as an immediate indicator of an offered product’s source for the public. It enables consumers to easily differentiate between the products of competitors. It also serves as a signal for the quality the consumer can expect for all the proprietor’s accordingly marked goods. Otherwise, this would require research and a bit of trial and error as well.
Because of this function of assigning a certain meaning to a certain sign, trademark law (for registered trademarks) grants trademark protection only in the form in which the sign was registered. However, case law recognizes the necessity of subjecting trademarks to certain modernizations in the course of their existence in order to remain visually contemporary. Building and maintaining a strong and identifiable brand is often one of a company’s most expensive investments. Consequently, the IP is worth a ton of money, which one doesn’t want to lose in an overzealous rebranding. Nevertheless, change is sometimes necessary to stay relevant, more than ever in the digital world. Often, designers choose to re-brand to herald their new age. Slimane did it multiple times, Phoebe Philo did it when she took helm of Céline before him and Raf Simons did it at Calvin Klein, to name but a few.
Don’t touch the distinctive character
In order to give trademark owners the freedom of movement required for this purpose, different forms of use of the trademark can preserve rights. The EU Trademark Directive only demands, that the rebranding has not changed the distinctive character of the trademark. That even extents to derivatives of the mark, which are registered as well. If, on the other hand, individual word elements or essential figurative elements are modified, this results in a change in the distinctive character of the trademark. This assessment of “equivalence” also depends on the degree of distinctiveness of the registered mark. The less distinctive the mark, the more likely it is that changes may be detrimental.
The change in the distinctive character of a mark assessed by reference to whether, the relevant section of the public perceives the shape registered and the shape used as constituting the same trade mark due to the overall impression.
So, what is allowed?
The graphic design and the colouring of a word mark is in principle covered by its scope of protection, provided that the graphic additions do not alter the overall impression of the word mark. This means that most font changes don’t affect word trademarks. Neither do changes to upper- and lower-case writing, removing a plural or genitive “s” or a hyphen. A brand jumping on the reblanding wagon in this way is consequently on the safe side of things. If the mark is composed of an image part, however, the question becomes harder to answer. The EU General Court is quite liberal and accepts changes such as a simple move of the word part as preserving rights. Removing minor decorative elements is safe as well.
Removing parts of a mark when rebranding is always a bit risky. But for Celine’s lost accent aigu, there is surely no risk of unequivalence. But dropping the Yves from Saint Laurent definitely crosses the line. Luckily, both variations had been registered and are used in parallel. If in doubt, registering the new variation on top of the old one and devising a scheme to use both in a way that satisfies all the Nizza classes of products the mark is registered for, is a good way to safeguard IP rights when doing some gentle (or not) rebranding.