SHOULD I FILE A COMPLEX MARK OR SHOULD I FILE A WORD MARK AND A LOGO SEPARATELY?

 

It is a common practice for enterprises to use word marks accompanied by logotypes or represented in particular graphic styles.

 

What filing strategy should then be chosen? Should the logo be filed separately from the verbal element?  Should the word mark and the “stylized word mark” be filed in a cumulative manner?

It is always preferable to file a mark in the form in which it will be used. Indeed, a mark which has not been used as registered, or at least in modified form which does not alter its distinctive character, during a continuous period of 5 years, may be applied for revocation before the French Courts or OHIM.

 

Yet, it may be wise to apply for the denomination which accompanies the logo separately from its graphic environment. Indeed, the logo might later be modified (in its form, color or structure): all I will need to do will be to file that new logo as a trademark, and this will not affect the word mark’s fate. The latter’s priority date will be preserved and this will avoid that third parties who would have, in the meantime, obtained rights to an identical or similar word mark challenge my new trademark application.

 

This is the case where:

 

  • I want to use the denomination separately from the logo on my communication supports. 

    2 different marks will therefore be used separately or combined.

 

For example:

 

 

  Cosmos 1and   COSMOS

 

 

  • The logo does not form an indivisible whole with the denomination: the denomination is perceptible as such and independently from the accompanying logo.
    Those are therefore 2 different distinctive signs and each has an individual identification power for products and services.

 

For example :

 

cosmos 2

 

 

 

  • However, if the logo and the word mark are inseparable and thus form an indivisible whole, that whole should be filed in the form it is used. 

 

For example :

 

cosmos 3

 

The choice whether to file one or two marks bears consequences as to the scope of protection of your distinctive signs. Indeed, if the word mark and the logo are separately registered, their individual protection will be stronger. If a third party reproduces or imitates the devicecosmos 4 without the word mark COSMOS or vice versa, it will be easier to prove a risk of confusion if my action is based on the registration protecting, as the case may be, the logo cosmos 5 or the word mark COSMOS, than if I proceed on the basis of a mark in which these two elements are closely linked and inseparable.

 

Thus, by filing their logo separately from their word mark, the following companies owning earlier trademarks succeeded in oppositions against applications for similar trademarks:

 

Prior mark Contested mark Decision Word mark that generally used with prior mark 
hermes 1 hermes 2    INPI March 10, 2015, OPP 14-4135  HERMES

 

 

 kanga 1

 

 kanga 2

 

INPI May 26, 2015, OPP15-0207

 

KangaROOS

 

In the following cases, where single-element marks are compared to two-element marks, a risk of confusion was found because the elements repeated or imitated in the contested marks are: either (i) detachable from the prior mark (as is the case for the mark VORTEX) or (ii) an element is protected separately.

 

Prior mark

Contested mark

Decision

Remarks

 

 vortex 1

 

 vortex 2

Opposition Division of OHIM, October 16, 2015

In the prior mark, the denomination is detached from the logo.

 

 M 1

 

 M 2

Opposition Division of OHIM, September 1, 2015

In the contested mark the logo is detached from the denomination.

 

However, if the logotype and the denomination are inseparable, it is sometimes difficult to prove a risk of confusion.  Thus, in the following examples, despite the fact that the denominations protected by the earlier marks were reproduced or imitated in the contested marks, no risk of confusion was found, because of the overall differences.

 

Prior mark

Contested mark

Decision

DOGHNUTS,    and donuts 1

 Krispy kremeet

 donuts 2

TEU, October 7, 2015

 

CALIDA

 

 

 Dadida

TEU, October 23, 2015

 

Rest of the article : Should I file a mark even if it is “weak”?

 

Contacts : Catherine LEVALET / Philippe LODS

 

Publication date : February 2016

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