Trade marks can take many forms, including business or product names, logos, slogans, symbols, sounds, colours, distinctive product shapes, or scents. However, most trade mark registrations are for either words (e.g. business or product names) or logos. This article will consider some of the critical differences between word trade marks and logo trade marks, as well as the advantages and disadvantages of each.
What does a trade mark protect?
Firstly, it is relevant to consider what protection a trade mark registration provides. Regardless of whether the trade mark is a word trade mark or a logo trade mark, the protection afforded to its owner is the same – it enables the owner to prevent someone else from using a trade mark which is ‘substantially identical’ or ‘deceptively similar’ to the registered trade mark (about the registered goods or services, or similar goods or services).
Word trade marks – scope of protection
One of the key differences between a word trade mark and a logo trade mark is that a word trade mark is not considered to be limited to any particular font or stylisation. This means that if another trader uses the same word or words in any stylisation, it would generally be considered use of the same trade mark. As a result, word trade marks are often useful to provide a wide range of protection.
Another advantage with word trade marks is that they will not become outdated (and potentially vulnerable to removal based on non-use) if you update your logo trade mark occasionally.
Logo trade marks – scope of protection
A logo trade mark is restricted to the particular representation as registered. As a result, it is often considered to provide a somewhat more limited range of protection than a word trade mark. However, if you are trying to protect the particular stylisation or graphic elements rather than just the words, then a logo trade mark would be the only option to protect those.
In addition, sometimes a logo trade mark may be your only option, as not all word trade marks are registrable. In particular, word trade marks describing your goods or services can be difficult to register. In cases such as this, registering a logo trade mark may be the only option to provide some trade mark protection for your business.
Logo trade marks will often include colour. If the logo trade mark is registered without any limitation as to colour, then it is taken to be registered for all colours. For example, if your logo consists of a picture of a green tree, an identical tree in a different colour is likely to be ‘substantially identical’ or ‘deceptively similar’.
NOTE: Trade mark protection in overseas countries and regions differs from trade mark protection in Australia. Some countries limit trade mark protection for logo trade marks to the specific colours for which they are registered, unless they are filed in black-and-white (often referred to as ‘grayscale’). Therefore, if you are interested in seeking protection of your trade mark overseas as well as in Australia, you should consider whether you file your trade mark application in colour or in grayscale.
Key takeaways
Ideally, registering both your word trade mark and your logo trade mark will provide the best scope of protection for your business. However, that may not be practical in all situations. Consideration should also be given to what it is that you are seeking to protect. If it is the business or product name that you want to protect, then seeking registration of the word trade mark is usually the best option. If it is the particular stylisation or graphic elements of a logo that you want to protect, then registration of a logo trade mark may be a better option.
Actuate IP has a team of intellectual property experts who can assist with Trade Mark Searches, Filing & Prosecution. If you require assistance, you can contact our team on 1300 851 138 or info@actuateip.com.au and our friendly staff will make sure you are directed to the best person to assist you with your matter.
FAQs
Does a word trade mark and a logo trade mark provide the same protection?
No, a word trade mark and a logo trade mark will provide different (but often complementary) protection for your brand. A word trade mark is not considered to be limited to any particular font or stylisation. A logo trade mark is restricted to the particular representation as registered but does provide protection for particular stylisation or graphic elements.
Is it better to register a word trade mark or a logo trade mark?
Ideally, registering both your word trade mark and your logo trade mark will provide the best scope of protection for your business. However, that may not be practical in all situations. Consideration should also be given to what it is that you are seeking to protect – the business or product name, or the particular stylisation or graphic elements of a logo.
Should my logo trade mark be filed in colour?
In Australia, a logo trade mark is taken to be registered for all colours, provided that it is registered without any limitation as to colour. However, this is different in some overseas countries and regions, so if you are interested in seeking protection of your trade mark overseas as well as in Australia, you should consider whether you file your trade mark application in colour or grayscale.