Difference between filing a trademark as a word and as a logo
Indian Trade Mark law saw its origin back in 1940 with the Indian Trade Marks Act thereafter increasing the need for protecting trademarks attributable to the rise in growth of trade and commerce. Since then, the trademark law has been amended quite a few times to comply with the standard of the growth of trade and commerce in the country. Developing businesses in India require trademark protection more than anyone else in order to keep their intellectual property guarded. Intellectual Property is intangible, yet one of the most important assets of a business.
Trademarks in India can be registered in different forms namely word mark, label, logo and device mark. One of the toughest decisions to make for one before registering a trademark is whether to register the mark as a word mark or as a logo.
A word mark registers the word itself one would want to use and renders stronger and wider protection to one’s business. Once a trademark is registered for a word mark, the applicant has the right to use and represent the word in any format or font which grants it wider protection including exclusive rights to the word as a whole and depict it in various formats regardless of its style for all the goods and services in respect of the mark.
A logo on the other hand gives one the rights in the combination of images, design and words taken together. Therefore, the protection given to the words in a logo mark are limited when compared with the standard word marks since the rights in a logo are only valid as a whole. If one wishes to register a particular stylized appearance or a combination of stylized wording and design, filing a trademark as a logo would be appropriate.
Quite often, the brand name of businesses constitutes both of words and logos rather than just a logo. The safest way to protect the intellectual property in such instances would be to file the trademark as both as a word mark and as a logo. However, since filing multiple trademark applications is an expensive affair, the next safest pick would be to register the trademark as a word mark.
Another phenomenon that needs to be taken into account would be change in the logos over time. With modernization and growth in business, companies could want a change in the design of their logo. This could create a hindrance if the trademark application was filed only for the logo. Had the trademark been filed as a word mark in the first place, any subsequent logos could still be supported with the original wordmark filed. Logos are protected only to the particular format they are registered in whereas word marks are protected in any manner of presentation.
An ideal example would be that of PEPSI. Since 1962 till date, PEPSI has changes its logo significantly a number of times. Had it registered its initial trademark application as a logo in 1962 and ceased usage of the same each time a new logo was created, then it would have to file a new trademark application for ever newly created logo. The initial trademark application would not protect any of the newly created logos. However, since they registered a word mark, they could do away with such hassles.
Ideally, separate trademark applications for word as well as logo should be filed to attain the broadest protection. But, while big companies might have the budget to justify such multiple applications, it may not be very economical for startup businesses. Hence, it is advisable to file the trademark as a word mark, giving one the next broadest protection against infringers.
Originally published at www.selvamandselvam.in on August 1, 2016.