You’ve made a decision to file your company’s logo to the Patent Office as a trademark. First thing which you will be obliged to do is to make a decision about the form of protection. Which trademark better protects your rights – a word or figurative trademark? Companies very often ask me the mentioned question, and therefore I decided to gather in one place all „for” and „against”.
Both word or figurative trademark put the emphasis on the other element of protection. It means that each one of them turns out to be better in specified situations. Therefore nobody but you must make a decision about the form of protection of your trademark.
If you have a unique name…
WORD trademark protects the meaning of the word (words) itself apart from the graphic designs. You can imagine that by combining two radio advertisements. If the name of your competitor’s company is similar to yours, than there is possibility of infringement.
Advantages:
- Possibility of forbidding the competitors using identical or similar name to protected word trademark. We compare only phonetic sphere.
- Word trademark can effectively help you to fight with domain blackmail.
- If your competitors are using Google Ad Words advertisement with the use as a keyword, the name of your company, than thanks to protection for a word trademark you can file a successful complaint.
- Rebranding – in case of change of the graphic design, the word trademark also protects a new logo.
Disadvantages:
- Difficulties in obtaining protection. The trademark must have distinctiviness. In this case it is impossible to register for example the common names.
- If your competitors are using similar graphic to yours, but with the different words, than the word trademark protection can not help you.
Example:
Everyone know the brands like FANTA, COCA COLA or SPRITE. Let’s say that the mentioned trademarks are not famous. If they were protected at the Patent Office only in the form of word trademarks, than they could do nothing for the below infringement.
Source: www.obrazky.pl
However, in case of the below infringements, a word trademark should be sufficient:
LITR sounds similar to LIDL…
and IKKA is like IKEA.
If you have a unique company’s logo.
FIGURATIVE trademark protects the word (words) in the scope of graphic design. The emphasis is put on the visual part of a trademark. In the context of figurative trademark, the beverages from the above picture are clear infringement. It does not matter that the words from the labels are phonetically different from the trademarks FANTA, COCA COLA or SPRITE. By their appearancce, they can confuse a potencial consumer. And this is why a trademark protection is created for!
Advantages:
- Possibility of forbidding the competitors using identical or similar name to protected figurative trademark. In that case, although the similarity on the phonetic sphere is examined, it is made in the context of the trademark’s graphic.
- Obtaining protection for the figurative trademarks is easier than for the word trademarks. It’s because of graphic which influences on distinctivity. It is possible to obtain protection for the expressions which wouldn’t receive protection as the word trademarks because they are for example common expressions.
Disadvantages:
- Rebranding – in case of change of the graphic design, the current figurative trademark doesn’t protect a new logo.
- In case of trademarks which the only distinctive element is graphic, it is difficult to enforce one’s rights to trademarks which are similar only in phonetic sphere.
Example:
Polish Patent Office granted protection for figurative trademarks PolskiBus (PolishBus) and Polskie Autobusy (Polish Autobuses). In both cases the distinctive element is graphic (the meaning is similar):
Source: Polish Patent Office
Figurative trademark: R-248646
Source: Polish Patent Office
Figurative trademark: R-173899
Word or figurative trademark. Maybe you should file a trademark in two variants?
Many companies don’t want to risk and they protect both forms of a trademark. It is related to an additional official costs, and this is why usually only huge companies decides for that form of protection. It doesn’t change the fact that such protection, if applied, provides protection on the most important fields. It is difficult to predict, while filing a trademark, what kind of infringement of our trademark can occur in the future.
Word or figurative trademark filed for protection sit well together. It can be said that together they neutralize their disadvantages. And thereby the protection is full. But you can choose one of the variants.
As I said at the beginning, the patent attorney can only show the advantages and disadvantages of each variant of trademark registration. The entrepreneur himself must choose the variant which is the best for his business activity.
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- Small company and trademark. When to file a trademark application? - 20 March 2018
- Trademark similarity: When does it lead to an infringement of the law? - 15 February 2018
- Rebranding – when it is a threat to your company? How not to lose a trademark? - 8 January 2018
Hi, do you have an opinion on the figurative mark containing word elements option? Would it give the company that registers for this type of trademark more protection or less? By less I mean if for example the symbol next to the company name is not always used in the position. Will it weaken the claim to the trademark? For example: when a company uses the symbol sometimes to the right sometimes in the middle and sometimes above the company name depending on the visual context it is in.
Would you recommend in this case for the company that has a very distinct name to register for a word trademark instead?
Thanks a lot!