As a trade mark professional, one of the most common questions that I am asked is whether a client should register their brand name as a ‘plain word’ trade mark, or if they should register their logo.
The simple answer is that it is preferable to register both.
However, where cost is an issue, the advice I generally give is plain word first, logo second.
A word trade mark gives very broad protection against potential infringement by others using an identical or ‘deceptively similar’ trade mark. A logo version of the trade mark can provide narrower protection, and may in some cases make enforcement more difficult.
A word trade mark also provides greater flexibility. For instance, a brand owner may wish to give their brand a facelift with a new logo and corporate getup. Having the underlying brand name registered as plain word ensures that the core brand name remains protected notwithstanding changes to graphical or stylistic elements.
A logo trade mark will often also have some protection as an artistic work under the Copyright Act. While this protection is different (and not as broad) as trade mark protection, it will still usually suffice to guard against blatant copies of a logo.
Of course, each case must be considered on its merits. Sometimes, it is preferable to register the logo rather than the word.
For example, the word itself may be difficult to register because it is non-distinctive. Registering a logo version of the trade mark can often avoid this problem.
Also, when protecting a trade mark overseas, it is often wise to register the trade mark in the form that it will mainly be used. This is because registering a trade mark in a different form may affect the validity of the trade mark, or make enforcement more difficult.
The Australian trade mark system is flexible and pragmatic, but also nuanced with several traps for the unwary. Before deciding what trade mark to file, it is advisable to consult with a trade mark professional to ensure your rights will be adequately protected.
Please contact me at blake.knowles@spruson.com with any queries you may have about trademarks.