What’s The Difference between a Word and a Logo Trade Mark?
Before you apply for a trade mark, there are many issues you need to consider including whether the trade mark is available. You may be wondering whether someone has already registered the same or similar trade mark, or whether the trade mark itself is registrable.
Whatever it may be, you are already on the right track in considering the legal protection of your brand, and you will be avoiding many headaches later because businesses often don’t recognise the value in obtaining legal protection for their brand name.
What many entrepreneurs also come to question is what exactly is more important to protect? My name… or my logo?
What is a Trade Mark?
A trade mark is a sign or symbol that is used to distinguish the products or services of one trader from those of another. It can be a word mark, a symbol, a logo, a tagline, a smell, a colour or a sound or a combination or words and graphic elements.
A word mark is one type of trade mark which is represented as a word without any graphical features. It does not include a logo or design and just protects the words themselves. A composite (design and words) or device (design) mark is another type of trade mark which use a combination of a logo and words or the use of a logo only.
Whatever type of trade mark it is, a trade mark must have the ability to distinguish the products or services in commercial activity from the products and services of another trader. A mark can only be considered registrable as a trade mark if it is distinctive. A trade mark that fails to meet this criterion will be rejected by the Trade Marks Office. Generally, a logo mark is more likely to be distinctive than a word mark because of its graphical (design) elements, for example, a picture or other stylistic features of the mark make it distinguishing in a way that sets it apart.
“Inherently adapted” means “adapted of itself, standing on its own feet” (per Harman LJ in Weldmesh Trade Mark [1966] 220 at 228, Court of Appeal).
Why is it easier to obtain Trade Mark protection for a Logo Mark?
A logo or composite mark is a mark that consists of any combination of traditional and non-traditional signs including images, pictures, designs and other graphical elements. A registered trade mark for your logo protects the image (shape and style) of your brand.
Logo marks are more likely to be adapted to distinguish because the distinctiveness results from the manner in which the stylistic features of the mark are combined. The greater the number of elements in a logo mark, the more likely that the proposed mark will be capable of distinguishing. Furthermore, the Examiner’s assessment of a trade mark is based on the mark as a whole and each element of the mark should not be discretely examined.
A logo mark that consists of a combination of a word and a graphical element, even though the word may be the same or like that of another trade mark, may overcome the argument that the mark is not the same or similar to another trade mark because of the combined stylistic elements.
Therefore, a logo mark that consists of a word in combination with graphical elements gives you rights in the combination of the features and words and is generally easier to protect than a word mark
Which is the stronger form of Trade Mark protection?
The word trade mark refers to the brand name or words only.
A registered trade mark for the word or words will protect the brand name of your business in no specific colour or font, or combined graphical elements. As such, a word trade mark stands as a direct barrier to another person trying to register the same or a similar name because there are no graphical elements that are arguably making it different. A word mark gives wider rights to the name because it protects the words only and not any graphical element, however, there may be more challenges to successfully obtaining registration for it as without any graphical elements, it is generally less distinctive than a logo trade mark.
Like many answers, this depends on many things and differs from business to business. Naturally, you will also want to protect what your audience correlates with your specific brand. For example, when one thinks of Mcdonalds, the immediate picture that comes to mind is the golden arches. However, registering both the name and logo will not always be possible or practical because of the cost or because the logo mark is more readily available than the word mark or because the word mark itself is not distinctive.
Always remember that the essential function of a trade mark is to designate the origin of the goods and services so that your customers can identify you in the market. If you have to choose between registering your brand name or your logo, then generally you should register your brand name as it is the primary way in which your customers will identify you and your brand.
Conclusively, you will want to gain maximum protection by registering BOTH your name and logo, however, if this is not possible, the better route is to register your name. Your logo should be an extension of your brand for a time when you are able to register both, but registering your name should be home-base!
Of course, every case is different, so it is important to discuss with an IP specialist about what is right for your brand.
Key Take Away Points
- Registering your trade mark is one of the most important first steps to protect the value of your brand.
- The word mark is the strongest form of protection.
- Obtaining a registration for the words encompassed with a logo will give you a second level of protection in your brand because it will protect the appearance of your brand in addition to the words.
- The best position to be in legally is to obtain registration in all your trade marks, i.e. your word mark, logo, and slogans.
Lara Alexandra, Legal Assistant and Trade Mark Administrator
We are a team of trade mark attorney and IP specialists based on Gold Coast and Sydney. If you have any questions about trade mark and brand protection, contact us on 1300 77 66 14
Disclaimer. The material in this post represents general information only and should not be taken to be legal advice.
