Take home message
- Registration of a word mark in plain block print provides strong, enforceable rights for the word, irrespective of the stylised form in which it is used, and is often the preferred form for registration.
- There are other considerations, such as how to file when the get-up conveys the trade mark impression to customers, the mark is always used in a stylised get-up, or the word portion of the mark is unregistrable.
- Registration of a composite mark, incorporating an unregistrable word component, can provide useful enforcement rights.
Thinking of protecting your trade mark?
A registered mark provides a number of benefits; the right to exclusive use of the mark for the goods and services covered, the right to sue for infringement, as a deterrent to competitors from using the same or similar mark, and as a hurdle to registration of similar marks by competitors. The question is which version of the mark should be registered to maximise these benefits? It is a strategic decision and one that is useful to discuss with your trade mark attorney to ensure the best outcomes.
What should be registered?
After making appropriate searches to confirm availability of the mark for use and registration, the next and very important decision is what version of the mark should be protected. Should it be the word mark, the logo, a composite mark combining a number of branding elements (such as the mark and the associated tag line), in colour or black and white? After filing, there are very limited circumstances allowing for amendment of a mark and the version of the mark as registered determines the scope of the rights granted by the registration.
What are key considerations in deciding which form of the mark to register?
- The search results may have an impact on the mark to be registered - what is the best form of the mark to file to avoid conflict with prior registered or unregistered marks.
- Will registration of the mark be problematic because it is descriptive? Registration in a logo or stylised get-up is likely to improve prospects for registration.
- In what form/s is the mark to be used? If there are multiple versions, more than one version may need to be protected.
- Is colour an important feature of the mark? If so, the mark may be best protected by filing as series to include both colour and black and white versions.
- Is the mark intended to be used overseas? Other countries may have different use and registrability requirements, which should be anticipated at the time of filing.
- What are the products and/or services and the context of how customers will see the mark in use? This will often determine if the word/s of the mark or the logo, label or get-up are more important to the customer in forming an impression of what is the distinctive feature of the mark.
- What is the budget? In an ideal world registration of a number of versions of a mark may provide best protection, however pragmatic cost decisions must be made.
What is registrable?
It is a commonly said that the best trade mark protection is obtained by registering word marks in plain word format. For some products or services such as pharmaceuticals, cars, financial institutions, the word IS the trade mark – think VIAGRA, HOLDEN, NYSE and for many products and services the words do the trade mark work and the devices and taglines are not memorable.
The above marks are all used in a stylised get-up, and often accompanied by logos and taglines, but for the consumer, the memorable part of the mark is the word, and best protection is afforded by registration of the word.
For many businesses, the creation of a new brand involves not only a word mark, but associated images, which may become synonymous with the word mark: think APPLE and the Apple Logo for electronic devices and the word McDonalds and the Golden Arches for fast food.
The words and the images are trade marks, which may be used in combination or separately, and the protection decision is easy – if both marks are inherently registrable, it is appropriate to register both.
For many composite marks, combinations of words and devices, what the customer identifies as the mark may not be clear cut, or registration of the word and device elements separately may not be possible, or the mark may always be used in the composite form. A decision must be made whether an application should be filed for the word portion of the composite mark, or for the composite mark, or both.
Again McDonalds provides a good example. For instore branding the word McDonalds is rarely used in isolation, and generally appears together with the Golden Arches on signage and packaging.
However the Golden Arches mark is frequently used separately to the word McDonalds. McDonalds has broad protection for the word McDonalds, for the Golden Arches mark and for the composite mark, due to the brand importance of each of these variations.
When to file a composite mark
When the trade mark get-up is key: The decision of the form to register for marks that are primarily used as composite marks will depend on the importance of the various components of the mark to the business, the registrability of the various elements, and the context of use of the mark.
When a product is retailed principally from supermarket shelves, customers frequently scan the shelves, seeking known or memorable images, labels, product shape or colour and one or more of these elements provide the key trade mark impression for customers. If so, registration of a composite mark which includes the word mark and images and colour may provide best protection for the mark. For example, for the customer, the Kinder egg shape and colour arrangement are equally important as the word mark for product identification.
When the word mark is unregistrable: In some instances a word mark may not be registrable because it is descriptive or non-distinctive, is a common surname or geographical name, or something similar may already be registered. Such marks may still be good trade marks and become registrable over time after acquiring reputation in the marketplace as a result of use, for example, WHOPPER for burgers and LEAN CUISINE for prepared meals. The marks below are examples of registrable composite marks with weak word marks which would not be separately registerable.
There is value in registering weak word marks as a component of a composite mark because:
- It places competitors on notice of the claim to trade mark rights
- It provides a deterrent to others adopting the same or similar mark
- It is a hurdle to competitors registering a similar mark
- It is an enforcement tool available against competitors using a similar mark
Therefore for those word marks that are likely, in the short term, to encounter registration difficulties, filing a composite mark is a good strategy. As illustrated by the examples above, when the unregistrable component, the words EASY READ, THE NATURAL NUTRITIONALIST and CANBERRA FASHION WEEK, are combined within a registrable get-up, registration is achieved. This gives the descriptive part of the mark the benefits listed above, until such time as the weaker word mark component may be registerable in its own right after use in the marketplace.
Enforcing a weak word mark
Even a weak mark can be a valuable enforcement tool. In Australia, the test for registration of mark is that it must be ‘capable of distinguishing’ the owner’s products or services from those of other traders. This is different from the test for infringement of a registered mark, which is that the alleged infringing mark must be ‘deceptively similar’ to the registered mark. The courts compare the whole of the marks, both the distinctive parts and the weaker elements, when assessing deceptive similarity.
The recent decision of REA Group Ltd v Real Estate 1 Limited  FCA 599, the court found infringement between marks which shared similar non- distinctive words, and this shows just how powerful a composite mark featuring a weak trade mark, can be. The REA decision demonstrates that rights in composite marks can be used to prevent a competitor using a deceptively similar mark which consists essentially of non-distinctive words.