Word or logo? Choosing the perfect trade mark application

In these strange times we’re used to big questions and the controversy that accompany them, lift lockdown or don’t lift lockdown? 1 meter or 2? Mask or no mask? Stand outside the newly opened pub or go inside? You know, big stuff. But the biggest question in the mind of a potential trade mark applicant is whether to file a word mark or a logo.

Now of course it’s worth nothing from the outset that these applications are not mutually exclusive, and brands commonly file both. However, this will incur more fees and there are sometimes particular reasons as to why one option may be preferable to the other.

The starting point in this assessment is to consider why a word mark might not be possible. A word mark, i.e. BRIFFA, is normally the ultimate goal. It offers the broadest monopoly, covering the word or words in different styles, fonts, colours etc. It’s also particularly useful as against third parties who may wish to hijack your domain name and it won’t require a new filing if your logo is changed or updated over the years.

However, the downside of a word mark is that it can often be harder to register. Firstly, because it could be refused at the examination stage, for example if it is too descriptive or not sufficiently distinctive. Secondly, because it tends to be more likely to generate an opposition from a third party with similar, but earlier, rights. Logos can therefore help if there’s a refusal risk (something we can guide you on) and they can distinguish your brand if there’s a high chance of an opposition (something which should be checked in advance with a clearance search). Logos are also useful if you have a particularly unique design and would like to stop third parties from using that design, even if they use slightly different wording.

So, in the age old question of word v. logo, the plan should be to try and register a word first, and if budgets are tight, think about a logo further down the line. However, if your friendly Briffa solicitor has advised that the word application might encounter difficulties either at the examination or opposition stage, it would be best to try a logo. But, just remember that your logo is likely to be protected by copyright and it’s important to make sure that whoever designed it (assuming that person wasn’t you or your employee) will need assign that copyright over to you. Fortunately, we can assist with that too.

As to the other big questions of the day, let’s worry about them once your application is underway.

Written by Will Miles, Partner