Word Mark or Logo?

WHAT SHOULD YOU REGISTER AS A TRADE MARK IN AUSTRALIA?

You have chosen your business name. You have a logo. You may even have been using both for years. Then someone tells you that you should register a trade mark and suddenly there are more questions than answers. Should you register the words or the logo? Do you need to register both? If the words are difficult to register, can you register them as part of a logo instead? What happens if you change the logo later? And if somebody copies the words but not your logo, are you still protected? These are questions we are regularly asked as Australian trade mark lawyers, and the answer is not always as simple as it might first appear.

The important thing to understand is that a word trade mark and a logo trade mark can provide quite different protection. Sometimes a word application is the obvious choice. Sometimes a logo application makes more commercial sense. Sometimes we recommend filing both. And occasionally a business has already spent considerable time and money building a brand only to discover that the words it wants to own may be difficult to register at all.

WHAT IS A WORD TRADE MARK?

A word trade mark generally protects the word or words themselves rather than one particular visual presentation of them. That can make a word registration particularly valuable because your branding will almost certainly change over time. Your website might be redesigned, your packaging may change and the beautiful logo you paid a designer for today may look rather dated in ten years. If the underlying word mark remains the same, a registration for the words can continue to be relevant despite those changes.

This reflects the basic idea behind Australian trade mark law. Section 17 of the Trade Marks Act 1995 (Cth) defines a trade mark as a sign used, or intended to be used, to distinguish one person’s goods or services from those of other people. A “sign” is defined broadly under s 6 and can include words, names, letters, numerals, devices, brands, shapes, colours and combinations of those things. So a trade mark does not have to be a logo. A word, phrase or name can itself perform the job of telling customers: these goods or services come from this particular business.

For many businesses, registering the words is therefore an important starting point. If your brand name is distinctive and available for registration, a word mark may provide more flexible protection than registering only the particular artwork in which the name happens to appear. IP Australia itself explains the distinction in practical terms: a word or phrase registration protects the textual content regardless of styling or font, whereas a logo registration protects the visual appearance of the logo.

SO WHY WOULD YOU REGISTER A LOGO?

There are plenty of good reasons. Your logo may itself be an important and recognisable part of your brand. Customers may recognise the symbol, graphic or stylised presentation before they even read the name. In that situation, there may be considerable commercial value in protecting the visual branding as well as the words.

There is another reason which can become important during the application process. Sometimes the words a business wants to register are difficult to monopolise because they have a descriptive or otherwise non-distinctive meaning in relation to the relevant goods or services. Adding a genuinely distinctive graphic or device element may mean that the combined logo is capable of distinguishing the business, even though obtaining exclusive registration of the words themselves may be more difficult. That can make a logo application a useful alternative in the right circumstances.

There is, however, an important catch. Registering words as part of a logo does not necessarily give you the same rights in those words that you would have obtained from registering the words themselves. IP Australia puts it quite simply: a logo registration protects the visual appearance of the logo and, although the logo can contain words, those words are not separately protected as plain text merely because they appear within the registered logo.

CAN I JUST PUT DIFFICULT WORDS IN A BOX AND REGISTER THEM?

This is where things become more complicated.

Putting descriptive words into an ordinary font, adding a border or surrounding them with a basic geometric shape does not necessarily transform them into a strong trade mark. The overall mark still needs to be considered for its capacity to distinguish your goods or services. The more ordinary the visual treatment, the greater the possibility that the distinctive problem remains.

Section 41 of the Trade Marks Act 1995 (Cth) deals with trade marks that are not sufficiently capable of distinguishing the applicant’s goods or services. One of the practical questions underlying s 41 is whether the words are the sort of words that other traders may legitimately want to use themselves. A business cannot necessarily take ordinary descriptive language that competitors need and obtain a monopoly over it simply by filing a trade mark application.

If a logo is being used to address a distinctiveness problem, the design therefore matters. A genuinely distinctive device, illustration, symbol or unusual graphic treatment may put the application in a different position from simply presenting otherwise descriptive words in an attractive typeface. Exactly where that line falls depends on the particular mark and the goods or services involved. This is one of the reasons we recommend having the proposed mark reviewed before spending significant amounts on applications or branding.

WHAT HAVE THE COURTS SAID ABOUT DISTINCTIVE WORDS?

One of the leading Australian decisions is Cantarella Bros Pty Limited v Modena Trading Pty Limited [2014] HCA 48; (2014) 254 CLR 337. The dispute concerned the Italian words ORO and CINQUE STELLE, used in relation to coffee. The High Court considered the “ordinary signification” of the words in Australia and whether other traders might legitimately want to use them in relation to their goods. Ultimately, the High Court held that the marks were inherently adapted to distinguish Cantarella’s goods.

The case is useful because it demonstrates why trade mark questions cannot always be answered simply by opening a dictionary. A word can have a meaning and still potentially operate as a trade mark. Conversely, a clever-looking name may encounter problems if, in the context of the relevant market, it tells customers something directly about the goods or services rather than identifying their commercial source. The relevant audience, the ordinary meaning of the expression and the legitimate needs of other traders can all matter.

That is also why two businesses using apparently similar branding can end up with quite different legal positions. Trade mark law is concerned not simply with whether two things “look a bit alike”, but with the particular registered mark, the goods and services for which it is registered and the way the allegedly infringing sign is being used.

WHAT IF SOMEONE COPIES THE WORDS BUT NOT MY LOGO?

This is perhaps the most important practical distinction between word and logo registrations.

Imagine a business has registered only its composite logo. Another trader does not copy the artwork at all but begins using the same or similar words in completely different branding. Whether the registered logo can be relied upon against that use is not answered simply by pointing out that the words appear somewhere inside the registration. The registered mark must be considered as a whole and the particular allegedly infringing use must be analysed under the Act.

Section 120 of the Trade Marks Act contains the principal infringement provisions. Broadly, infringement can arise where a person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the registered trade mark in relation to relevant goods or services, subject to the detailed provisions and exceptions in the Act. That comparison can become particularly important where the registration contains several elements — for example, words together with a distinctive graphic device.

The Full Federal Court’s decision in Australian Postal Corporation v Digital Post Australia Pty Ltd [2013] FCAFC 153 illustrates the importance of analysing the particular marks rather than simply isolating individual pieces of branding. The dispute involved Australia Post’s registered trade marks and the use of DIGITAL POST AUSTRALIA. The Court’s analysis reinforces a basic but sometimes overlooked point: in an infringement case, the registered mark actually relied upon matters.

This is why choosing what to register at the beginning can become extremely important years later when someone adopts similar branding.

SHOULD I REGISTER BOTH THE WORDS AND THE LOGO?

For some businesses, yes.

Registering the word mark and logo separately can provide complementary protection. The word registration may protect the name independently of its particular appearance, while the logo registration can protect important visual elements of the brand. IP Australia’s own guidance notes that many businesses register both a word or phrase mark and a logo mark to maximise protection.

But filing everything is not automatically the best strategy. Every application has a cost, the correct owner needs to be identified, the appropriate goods and services need to be selected, searches should generally be conducted and the proposed marks need to be assessed for registrability. A business with several names, logos, slogans and product brands can quickly end up filing a large number of applications without necessarily obtaining the protection that matters most commercially.

A trade mark strategy should therefore begin with a different question: what part of the brand would actually hurt if a competitor copied it? The answer may be the business name. It may be a product name. It may be a distinctive logo. It may be both. That is the part worth examining carefully before deciding what should go onto the Trade Marks Register.

WHAT IF MY LOGO CHANGES AFTER I REGISTER IT?

This is another reason not to treat a word registration and a logo registration as interchangeable.

Logos evolve. Businesses modernise them, simplify them, change colours, remove graphics and sometimes undertake a complete rebrand. If you have registered only a particular logo and later make significant changes to it, the old registration does not simply transform itself into the new design.

By contrast, if the underlying brand name has also been separately registered as a word mark, changing the visual presentation of that name may be less significant to the scope of that word registration. This can make a word mark an important long-term asset where the name itself is distinctive and registrable.

That does not mean every minor logo alteration requires another application. Nor does it mean every business should automatically register every version of its branding. It does mean that substantial rebranding is a sensible time to review the trade mark portfolio and ask whether the registrations still match what the business is actually using.

WHAT ABOUT ™ AND ®?

These two little symbols are often confused.

You do not have to wait for registration before using ™. Businesses commonly use it to indicate that they are treating a name, phrase or logo as a trade mark. It does not mean that IP Australia has examined or registered the mark, and using ™ does not itself create a registered trade mark.

The ® symbol is different. It represents registration and should only be used in Australia in relation to a trade mark that is actually registered in the relevant circumstances. Section 151 of the Trade Marks Act 1995 (Cth) contains offences concerning false representations about trade mark registration.

This distinction can matter particularly where a business is deliberately building recognition in a new brand before, or while, considering registration. How the proposed trade mark is actually used can also become important if evidence of use is later needed during examination. The placement of the mark on websites, packaging, advertising and other materials may therefore deserve more thought than simply adding ™ wherever it happens to fit.

WHAT IF IP AUSTRALIA MIGHT REJECT THE MARK?

Sometimes we can identify a potential problem before an application is filed. The proposed mark may contain descriptive words. There may be an earlier registration that needs to be considered. Or there may simply be uncertainty as to how an examiner will view the mark.

One option in appropriate cases is TM Headstart, IP Australia’s pre-application assessment service. It allows an examiner to assess the proposed trade mark before the applicant decides whether to formalise the application. IP Australia says the process provides feedback and an opportunity to make certain changes before formal filing.

That can be useful where there is uncertainty about whether to apply for the words, the logo or another version of the mark. But TM Headstart has its own procedures, fees and strict timeframes, and it does not replace the need to decide what the business actually wants to protect. Importantly, IP Australia explains that the effective filing date arises when the application is formalised, rather than when the initial Headstart request is submitted.

SO, WORD MARK OR LOGO?

There is no single answer.

Sometimes the words are the most valuable part of the brand and a word application should be the priority. Sometimes the visual identity is commercially important enough to justify its own logo registration. Sometimes the words themselves present registrability issues and a distinctive composite logo needs to be considered. And for established brands, registering both may provide a more useful combination of rights.

What matters is understanding what each registration will actually protect before you file it. The cheapest application is not necessarily the best application, and simply obtaining a registration is not the same thing as obtaining the registration your business will need if a competitor comes too close.

At Sharon Givoni Consulting, we advise businesses on Australian trade mark selection, searches, applications, objections, oppositions and infringement. We can review your proposed word mark and logo, consider which elements of the brand are most important to protect, identify potential problems before filing and recommend an application strategy appropriate to your business.

Trade mark law can become technical very quickly. Our approach is to explain the options in plain English — Turning Legalese into Legal Ease® — so that you understand not simply whether you can file a trade mark application, but what you are actually protecting.

If you are deciding whether to register your business name, brand name, product name, logo — or all of them — contact Sharon Givoni Consulting for trade mark advice before you file.

---

Please note the above article is general in nature and does not constitute legal advice.

Please email us info@iplegal.com.au if you need legal advice about your brand or another legal matter in this area generally.