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The problems faced by our clients with traditional firms come from their external nature. Clients may feel that the advice is not tailored to their business or that the services do not align with their structure or vision. On the other hand, in-house teams are under increased pressure and may not have the specialised legal knowledge or skill to deal with complex tasks.

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Word mark v. Figurative mark: which one to choose?

Jul 24, 2020, 12:56 PM

Today, brand owners can register a trade or service mark under different forms and in multiple jurisdictions. Companies can register a word, a sound, a graphic or 3D design, and even a colour. In this multiplicity of possible registrations, it is sometimes difficult to know which type of registration is the most effective to protect your brand.

The most popular way of registering a trademark is to apply for a word or figurative mark. A word mark protects the meaning of the word itself apart from any graphic design and puts the emphasis in the phonetic of the word. In that context, a word mark allows brand owners to prevent others from using an identical or similar name to the protected word mark. Moreover, if a company decides to rebrand, the registered word mark will protect the new logo, without the need to change or register a new trade or service mark.

However, a word mark gives a broader scope of protection for brand owners, so it is not easy to obtain such protection. Indeed, for an application not to be rejected, the word mark must be a word which is distinctive enough, or a word which has acquired secondary meaning. A generic word may prove difficult to register as a trademark, as a brand owner cannot hold an exclusive right to the term.

The other disadvantage of registering a word mark is that if a competitor uses a similar graphic than your brand, but uses different words, which are not phonetically similar to the registered word mark, the company could not prevent the competitor from using it.

In contrast, a figurative mark protects the word in the scope of a graphic design. The emphasis here is put in the visual part of a trade or service mark. In that case, even if two words are phonetically different, if their appearance, through their designs, is similar, there is a high risk of customer confusion. For that reason, brand owners who have figurative marks can prevent others from using identical or similar versions of their marks.

Obtaining protection for a figurative mark is easier than a word mark. The main reason is that the graphic design directly influences the distinctiveness in a figurative mark, as opposed to a word mark, where distinctiveness only results from the word itself. One of the main disadvantages of a figurative mark is in the case of rebranding. When a company rebrands, the registered figurative mark will not protect the new logo of the company.

In addition, when the only distinctive element of a figurative mark is graphic, companies would have difficulty in enforcing their trademark rights, especially if the similarity with a third party’s brand is only based on the phonetic word.

To illustrate the issue of figurative marks in UDRP disputes, the case of FriendScout24 GmbH v. Protection of Private Person / Besnik Lajqi, L.M.Z Meida Solutions SH.P.K., WIPO Case No. D2018-0531 is particularly relevant. In the decision, the Panel held that as design or figutative/stylized elements are incapable of representation in domain names, these elements are largely disregarded for the purpose of assessing identity of confunsingly similarity under the first element. The Panel further added:

“Only in cases where design elements comprise the dominant portion of the relevant mark such that they effectively overtake the textual elements in prominence, or where the trademark registration entirely disclaims the textual elements (i.e., the scope of protection afforded to the mark is effectively limited to its stylized elements), UDRP panels may find that the complainant’s trademark registration is insufficient by itself to support standing under the UDRP”.

Consequently, to have full protection of their trademark, brand owners are strongly advised to register both word and figurative mark. When enforcing trademark’s rights in the domain name industry, registering a word mark is indisputably the best and safest option. A domain name can only be composed of word(s) and cannot represent a graphic design. Therefore, owning a registered word mark is the most effective way to fight against cybersquatting. Yet, a figurative mark can still give brand owners an enforceable right if the distinctiveness of a mark does not exclusively rely on its graphic design.

Caroline Valle
Legal Advisor

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