Word mark or figurative mark – The dilemma of choice when filing a trademark application

Anyone wishing to register a trademark faces a choice as to which form of trademark to select. In addition to some exotic types (e.g. sound mark, positional mark, etc.), word marks and figurative marks or word/figurative marks are primarily available. However, few laypeople are aware that with their choice at the time of application, they are already setting decisive precedents that may later potentially have adverse consequences. It is not uncommon for it to be established in a dispute that the registered trademark does not have the hoped-for scope of protection.

A trademark is not a trademark. The decision in favour of the correct form of trademark is already decisive for the later scope of protection when filing a trademark application, which is why some care should be taken in this regard and, if necessary, a specialist lawyer for industrial property rights should be consulted.

As the name suggests, the subject of a word mark is a word. This is exclusively about a specific term that is to be protected in connection with specific goods and/or services. By contrast, the subject of a figurative mark is exclusively a graphic design, regardless of whether the graphics ultimately consist more or less of a word. The designation of the figurative mark as a word/figurative mark disguises this fact. The terminology merely indicates that a sign is protected as an image, but may contain a word.

The correct tactics

This distinction is of considerable importance in the case of (alleged) trademark infringement. Although the figurative mark is often characterised by its word element, if this is pronounceable and distinctive, the evaluation also takes into account the (other) graphic element. If the trademark applicant is primarily concerned with a word that they have merely "embellished" with a graphic, the word mark is the better choice. In the event of infringement of the mark by use of the term, enforcement of trademark rights is definitely easier if it consists of a word mark and the infringer uses the protected term.

The filing of a figurative mark is to be considered, on the other hand, when a (wordless) logo is to be protected or the word element contained therein is not capable of protection as such. In the latter case, however, it should be borne in mind that trademark infringement cannot then be based on the word element, but the mark is dependent on the graphic elements, which alone determine the scope of protection. The registration has at most a deterrent effect with respect to the word element. A figurative mark consisting exclusively of a non-distinctive word is likewise incapable of protection, although trademark offices sometimes approve such applications (in particular the European Union Intellectual Property Office in Alicante – EUIPO). In this case, it is advisable to include any graphic element in order not to risk rejection of the trademark application.

Summary

As a result, preference should be given to the word mark where possible if a logo is substantially characterised by the term contained therein and this term is distinctive, that is, suitable for distinguishing the goods and services of different enterprises. If necessary, simultaneous filing of word and figurative marks may be appropriate. This is a matter of individual circumstances.