You have a trademark. And you want to protect it. So you start the process to register your trademark. Then you come up against the question of what kind of trademark you have – and then you find out there are as many as ten different kinds of trademark. The most frequently occurring of these are word marks and figurative marks. But which one is going to give you the best protection? In this article, Pieter Veeze, legal specialist and spokesperson at the Benelux Office for Intellectual Property (BOIP), tells us about it.
Pieter first explains what a trademark is: “Suppose you have a rather picky cat that only wants to eat cat food of a particular brand. When you do the shopping, you often just grab the right packet of cat food without really thinking much about it. A number of things help you recognise it: the shape of the packaging, the logo, the lettering or even the colour of the packet. And that is what recording a trademark is all about. As an entrepreneur, you have to record and protect precisely those elements by which customers recognise you and your products or services.”
Tables and chairs – more about word marks
A word mark is the name you give to your product or service, without any particular format. Do your customers recognise your products or services by this name? If they do, then it is sensible to record this name in any case as a word mark. Look at a word mark like the umbrella of your protection: you have the exclusive right to use it. A word mark must be distinctive though. Pieter explains what this means: “For example, you cannot protect ‘tables and chairs’ as a word mark and then knock on IKEA’s door claiming royalties for every table and chair that’s sold. You cannot claim a descriptive name as a trademark.”
Apples and pears – more about figurative marks
In practice, using standard printed letters on their own for trademarks is rare, says Pieter. “A number of graphic elements, such as letter types, colours and logos, are often added. If your customers also recognise your products or services by those graphic elements, it is sensible then to record those too as trademarks. You can protect the elements in different ways: in combination, for instance the word ‘apple’ with a stylised apple underneath, and/or separately, in colour for instance, but also in black and white.”
Recognisability: the key to protecting successfully
So you can record one and the same trademark in different ways, depending on the elements you want to claim protection for. Pieter: “What is important is which elements of your trademark are the most recognisable. A separate logo can also be very recognisable. Think about Shell’s red and yellow scallop. Or Apple’s stylised apple. If a competitor wants to bring laptops or smartphones onto the market with a sign showing a pear and a stalk and a bite taken out of it, he’s probably got a problem.”
Apply for your trademark registration in 4 steps
Registration protects the value of your trademark, but there is a lot to consider when applying for trademark registration – and there are costs involved. Use these 4 steps to check what opportunities and possibilities are open to you.
Start the steps
Five practical tips about protecting your trademark
Tip 1: Ask your customers how they recognise your products or services. Do they do that by your trade name, a particular letter type, a logo or the colour used? Those are all elements that you can protect as a trademark.
Tip 2: If your trade name is distinctive, then it is in any case sensible to record it as a word mark.
Tip 3: If your trademark has a particular letter type, includes a logo or uses special colouring, then you can also record that. You can choose to record those elements separately or combined. If you record elements separately, you are in a better position to take action against competitors who use that one specific element alongside other different elements. If you record combinations of elements, you are in a better position to take action against competitors who come too close to you from an overall perspective, while the separate individual elements correspond less perhaps.
Tip 4: You gain the best protection often by applying for several trademarks. You determine yourself, as trademark owner, the extent to which you should do that.
Tip 5: Ask yourself how likely it is that a competitor would adopt certain elements of your trademark and, if that happens, how would that affect you? And keep an eye on the costs. You pay for each trademark application separately.
Apply for your trademark registration in 4 steps. Start by following the steps.
A trademark application can be refused for a variety of reasons. Avoid this and check the reasons why trademarks are refused.
More about trademark refusal