A commonly asked question at LegalVision is whether a business should register their name or their logo. The short answer is, ‘it depends’. The longer answer is that many factors lead to whether a business should register the name, the logo or both. We discuss these factors below.
An overarching principle relating to trade mark registration is that a business should register the mark that they use for consumers to recognise their brand. In many cases, this means registering both the business name and logo. For maximum protection, you should register all associated marks.
There are situations, however, where a business will need to choose. This article considers the various situations that can lead to a business having to decide what to register and the benefits of each type of trade mark.
Different Types of Protection
Business names and logos are registered as separate trade marks. In Australia, registering your business name as a trade mark is called a ‘word mark’. A trade mark composed of an image or graphic element only is known as a ‘device mark’, and a mark which contains both a graphic element and at least one word is a ‘composite mark’.
Each of these types of marks provides different protection to the marks. A word mark protects the name itself (not for any particular font, colouring or styling). The owner of a word mark has the exclusive right to use the written word and spoken word regarding its business and similar businesses.
Device marks and composite marks provide protection for the overall impression of the image including the shape, orientation and style. The overall impression of the composite mark includes the words, but importantly, the words themselves do not have protections (as in the case of a word mark).
What if I Can’t Register my Business Name as a Trade Mark?
When you file a trade mark application with IP Australia, there are two main objections that IP Australia may raise. The first is if there is a conflict which means that there is an identical or very similar trade mark already on the register. If this is the case, you should consider changing your name because your name may be infringing the registered trade mark.
The second objection is if your trade mark is not considered to be ‘inherently capable of distinguishing’ the goods or services that your business is associated with. Essentially, IP Australia will raise an objection if they think the word mark is too generic or descriptive. This may be a situation where you consider registering your logo instead of your name. If you have a logo that constitutes a device mark or a composite mark, you may find more success in registering the trade mark. Another option is to register an acronym (if it isn’t already on the register) of your business name.
You can overcome both these objections if you can demonstrate evidence of use, but this is generally for established businesses that can show their brand presence over a period.
What if Both are Available, But I Can Only Afford One?
Businesses, especially those that are starting out, sometimes face the decision of choosing to apply for one trade mark because of costs. If both a word mark and a logo are possible options, the decision is up to the business owner. A trade mark lawyer can advise you on your options in light of your business and industry. Importantly, consider the differences between the two protections as set out above. Also, take care to confirm no one else is using your name or logo.
How do Consumers Recognise and Identify Your Brand?
Many logos incorporate a graphic element and a business name, these are called composite trade marks. Where the business name forms a large part of the logo’s “overall impression”, registering your business name will provide some protection over a composite trade mark or the logo as a whole.
While most businesses choose to begin with registering their business name and register their logo later, initially registering both as a preventative measure outweighs the potential costs of any trouble that may arise in the future if the marks are not registered.
You are most likely reading this article because you already know that trade mark registration is essential for your business. Simply put, you should register the marks that you use to identify your brand and registering all representations will provide you with maximum protection. If you can register all, do it because it is worth registering a trade mark now rather than missing out and being forced to change your name later.
It’s also sensible to chat with a trade mark lawyer to understand all your options and work our an effective strategy to protect your brand. A trade mark lawyer can also advise whether IP Australia is likely to raise any objections and how you can overcome them. Questions? Get in touch on 1300 544 755.
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