Words and logos represent two major forms of trademarks, accounting for over 95% of all trademark applications [1]. The remaining applications include alternative marks, such as colours and sounds. Focusing specifically on the choice between a figurative and textual form of a trademark, three particular aspects should be considered.
The first key area of consideration revolves around the actual use of the mark in interactions with customers. A general recommendation is to apply for a trademark for the form that is displayed in products and used as part of these interactions with business partners and customers. Basically, trademark registration protects your brand from being infringed by competitors and hence, if it is a figurative form of the brand name that differentiates your products / services in the eyes of the customers, this form of trademark should be registered in order to provide effective protection against copycat attempts. Based on our experience, it is the figurative form of a trademark that is most frequently required by entrepreneurs and corporations, despite the fact that they are not fully aware about this distinction.
The second aspect of consideration revolves around the ease of registration. One of the general criteria for a successful registration of a trademark revolves around the level of distinctiveness, with the eligibility being assessed based on the context to which the trademark displays uniqueness and is therefore capable of effectively differentiating the products / services from competitors. In comparison to a figurative form for which the choices are virtually endless, there are apparent limitations in this criterion associated with the use of a textual form of the trademark. With over 11 million trademark applications being received on an annual basis [1], the level of similarity with the marks already registered can be expected to be increasingly high. As a result, it is the figurative form of a trademark that opens up more opportunities for effectively distinguishing the mark that benefits from a higher change of being successfully registered.
A practical example can be made of IBM that applied for its figurative trademark in the European Union in 1997 and five years later for a textual form of the same trademark. Essentially, this approach protected IBM from copycat attempts by establishing a level of protection for the figurative use of the mark in interactions with business partners and customers whilst fostering the level of acquired distinctiveness that eventually enabled the company to register its textual form as well.
Finally, the third aspect that needs to be considered when designing between textual and figurative form of a trademark revolves around the scope of protection. Once the application process is completed, the registered trademark allows its owner to challenge any new applications or practical uses of trademarks that are perceived as similar. In the context of a figurative trademark and provided that the textual element is also distinctive enough, this level of protection extends to both figurative and textual trademarks. Conversely, if a company uses a figurative trademark in its business dealings and registers solely for the textual form of a trademark, the figurative elements (logo) remains unprotected.
Overall, although there are of course numerous exceptions to this claim, it is the figurative form of a trademark that is more often the appropriate option for registration. The chances of a successful trademark registration are greatly enhanced as it is likely to provide a higher level of distinctiveness (a key criterion for eligibility), it usually coincides with the actual use by companies and it provides a substantial scope for protection. In case you are still left unsure about the most suitable form of a trademark for your needs, please do not hesitate to get in touch and our expert attorneys will gladly guide you through the process.
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WIPO (2019), “Facts and figures”, available from: https://www.wipo.int/edocs/infogdocs/en/ipfactsandfigures2019/
