Trademark, in simple terms, is a source indicator of a product or a service. Consumers identify the origin of a particular product or service through its trademark. The usage and adoption of trademarks have had evolved continuously over the past several years. The commonest types of trademarks are 1) standard character and figurative marks and 2) sound and smell marks, while the former being conventional and the latter, non-conventional.
Often people are confused between a word mark and figurative mark, i.e., logos and designs, and the extent of protection each mark enjoys. Undisputedly, word mark enjoys wider protection than the figurative marks. Some businesses use their trademark in a plain font style or as stylized words without any graphical or artistic elements such as Infosys, Parry’s, Google, Harley Davidson,
while other brands use figurative marks (i.e., logos) predominantly as their trademarks and would use their brand or corporate name alongside their logos, like these examples.
CAN filing a single application for both logo and a word mark sufficient?
There are a lot of myths and misconceptions that filing a logo would automatically protect each predominant feature in it, and a handful of trademark professionals also subscribe to this misconceived notion. It is impending to address this issue with a suitable provision of law from the Trademarks Act 1999 (“Act”).
- Section 17 – Effect of registration of parts of a mark
(1) When a trade mark consists of several matters, its registration shall confer on the proprietor exclusive right to the use of the trade mark taken as a whole. (2) Notwithstanding anything contained in sub-section (1), when a trademark-(a) contains any part -(i) which is not the subject of a separate application by the proprietor for registration as a trade mark; or (ii) which is not separately registered by the proprietor as a trade mark; or(b) contains any matter which is common to the trade or is otherwise of a non-distinctive character,the registration thereof shall not confer any exclusive right in the matter forming only a part of the whole of the trademark so registered.
Section 17 of the Act straightforwardly addresses this issue and clarifies that when there are multiple subject-matters included in a single mark, exclusive rights can only be exercised only on the whole mark and not in a piece manner. For example, in the Starbucks logo, exclusive right over the word STARBUCKS cannot be exercised, without registration of the word STARBUCKS separately as a wordmark.
Therefore, by all means, it is important to protect the word mark and logo individually by means of separate applications.
Note: All logos and registered trademarks referenced herein are registered trademarks of their respective owners.