With the evolution of trademark law, a number of non-conventional trademarks such as sound marks are now being practiced. But in general, the businesses still oscillate on whether or not to register a word mark or a device mark in most cases.
A trademark is a visual representation, which could encompass a name, a logo, labels, taglines, with or without colours and fonts, It is attached to a particular product or service, to enlighten the customers, that the said product or service is manufactured by a respective proprietor or an organization and it differentiates the said product or service from those in the market. The trademark procedure in India is governed by the Trademark Act, 1999, and the Trademark Rules, 2017. A registered trademark in India is valid for a period of 10 years after which it can be renewed on a timely basis.
The history of trademarks in India has been metamorphosing ever since the 10th century when the merchant’s mark was used to brand the cattle and potteries then. The law changed with the changing business patterns. Today, undoubtedly, the legislation has come a long way in intellectual property and in trademarks especially.
With the evolution in the modus operandi of conducting businesses and with the surging competition in the market, the trademark categories have expanded as well. No longer are trademarks restricted to a name alone. It is now extended to categories as shown below;
Includes words, letters or numbers. It is not mandatory that the words should convey any meaning
Includes logos, labels, slogans, taglines or monograms, drawings and designs
Consists of a single or a combination of colours, without or without a logo
Three Dimensional Trademark
The shape of certain goods and their packaging are included. It is considered a non-conventional trademark. For instance, the packaging of Toblerone, the contour of Coca-Cola bottles etc are three-dimensional marks
A tune or a sound that enables a customer to distinguish a business’ products or services. The default ringtone of Nokia, the sound of the lion roaring at the beginning of an MGM produced movie are examples of sound marks.
Word Mark Registration
As the name suggests, a word mark deals with the registration of words and letters or a combination of words as a trademark. The sole concentration lies in the way in which the letters are represented in the brand name. It includes the font size, the design, and the aesthetic features of the letters. Here, the trademark protection is meted out to the brand name alone.
Once the registration is obtained for the words in the brand name, the proprietor gets the exclusive right to use the same and market the products or services under the respective name.
SONY, Google, CALVIN KLEIN etc are classic examples of word marks.
One of the greatest advantages that a word mark has to offer is its flexibility. The proprietor is free to play with the design and style of the words represented in the word mark. The protection is extended to the word irrespective of its manner of depiction. It has to be ensured that the word is spelt the way it is represented in the business in the trademark registration application.
To register a word and the logo, if the brand name has any, two separate applications have to be made and hence twice the fee is required. This could be really expensive for several business ventures.
Also, registering a word mark alone may not seem visually pleasing to the customers. It might be difficult for a common man to recollect a name alone without any kind of pictorial representation like a logo in place. If the representation of the words says, its design is altered, it might leave the customers flabbergasted and all the marketing could go in vain.
Device Mark Registrations
A logo, tag line, label, monogram, design or a combination of a logo and words in a brand name is called the device mark. A device mark may or may not comprise specific colors. But when an application is made along with a specific colour, the trademark protection will extend only to that respective color. In practice, therefore, the colours are generally not included in the trademark application.
When a brand name comprises a combination of letters, shapes, designs, a device mark must be registered through the trademark application. Doing so endows the proprietor with exclusive rights to use the trademark and prevents third parties from employing the same logo for their businesses.
Mcdonald’s, PUMA, ANDROID, etc are examples of Device Mark.
Compared to word marks, a device mark is pleasing to the eyes and a customer can remember the brand much more vividly when it is represented pictorially with a logo or a design. Also, when a device mark is used, it reaches the customers easily without taking it hard on the marketing side. For instance, the ü mark can easily be associated with NIKE. A half bit apple is easily related to Apple Laptops and iPhones.
A major drawback with device marks is the lack of flexibility. It is mandatory to use the mark exactly the way it was represented in the trademark registration application. Even slight to moderate alterations to the design or logo, cannot be protected by the registration that was made earlier.
Another practical difficulty is that, while running a trademark search, it is the norm to check the word marks alone. Although the design and logo can be checked, it is far more complicated to do a trademark search with those. Additionally, the proprietor has to take adequate care to carefully lay out the logo and designs and give all the additional details required during the registration.
It is therefore imperative that a business proprietor thinks with a futuristic approach and decides whether a device mark or a word marks would be apt for the respective establishment or organization. Careful scrutiny is to be employed before applying for the trademark registration as to whether registration is required only for the brand name or only the logo, or if an application needs to be made for either of them separately.
In the case of Microsoft, the company had the brand name ‘Microsoft’ word marked. When they recently changed their logo, it did not affect their trademark registration. Alternatively, if it was a device mark, another application should have been made, since the earlier registration would not extend its protection to the new logo.
Thus, there is no right or wrong thing to do in the case of trademark applications when it comes to deciding between the Device Mark and Word Mark. The business venture has to weigh the pros and cons of both the marks along with their choice of brand name and decide accordingly.
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