Trademark’s Identity

By: Amro Hattab:
Executive Director/ AGIP Jordan Office

Recently, I have been approached by many people asking questions on the elements of the mark that should be included within the trademark registration, and as we know, a trademark consists of letters, numbers, devices, logos, and colors, and these elements could be also presented in a stylized format, logo, and label or as a trade dress. So what would be the best practice to adopt when registering your brand?

Unfortunately there is nothing called a best practice, as it all depends on various elements that have to be considered before filing the mark at the respective trademark office(s). Such elements are usually examined and determined by different departments, the Marketing Department, the Brand Management, the Legal Department, and in some cases the Procurement or Financial Departments. These elements are based on a strategic long term vision rather than short term plans, so the main question, should the mark be filed in word format or in other versions? Before answering this question let us summarize the advantages of such practices:

Word mark: It does not make a difference whether the mark is filed in block letters or not, as long as the mark is simply filed in undistinguished manner, simply word letters without any stylization. This allows the applicant/owner of the mark to use the mark in different shapes but without any kind of exclusivity to other elements used within the mark. Subject to condition that the mark is distinctive and not generic or descriptive or commonly used or dictionary words.

Logo/device marks: This refers to a mark with special elements, and it helps brand owners protect their marks as a whole, the word part as well as the drawing parts. This could be a registration in black and white colors (grey scale) or in a set of colors. The device or the logo should be distinctive enough to stand as a registrable logo or device.

Colors vs. B&W: Black and White marks give the applicant/owner the flexibility in using the mark in any color they deem appropriate but without exclusivity to any color in specific. While for colored marks, the brand owner will be only using the mark in that combination of colors. If the color is custom made or special color, or at least the color represents a major part of the mark and main element, then a colored mark application is favored in this case.

So before filing the mark a set of questions should be asked as listed below:

How the mark is being actually used, or to be used?
Is the mark being used in one format or in different shapes covering diverse product lines? 
Do the colors included within the mark represent the corporate identity of the applicant/owner?
Does the mark include generic terms that are being frequently used in this industry?
Are you a service provider or a product manufacturer?
Are your selling to businesses or to consumers (B2B) vs. (B2C)?

If the mark is being used in different shapes then filing the mark in word would be the most feasible option, while on the contrary if the mark is strictly being used in one format, where filing a logo mark will be recommended. 

On the other hand, some brand owners reflect their corporate identity on their marks, for example the owner is known for his products in red color (like Emirates Airline) and that color is being reflected on all aspects of the company, in their advertisements, promotional campaigns, and even on the interior designs of the firm. This is where color is of essential to be claimed within the registration. In fact, it is even more important to file the mark with claiming colors rather than a simple word mark or even a black and white logo mark.

Additionally, the good’s nature (service vs good) is also an element to be examined, since public confusion is relatively more likely to take place among products rather than services, in addition to the fact that products are easily transferred and movable from one place to another.

As for the fact that the mark is being strictly used between business owners rather than regular customers or consumers, this limits public confusion and the entry of infringing items will be more difficult to penetrate such a network. So the need for a distinguished mark is less of importance in the early days of launching the associated products. 

Some may argue that the best practice is to go for the maximum and broadest protection by filing the mark in all available shapes, as in word mark, logo mark in black and white as well as the logo mark in colors. This might be true but it will be a costly option especially for newly established firms. Accordingly, the recommendation would be to identify the most appropriate mark out of the above that meets the owner’s vision and goals, and then start further filing gradually in the future. 

In some countries, where untraditional marks are acceptable, the option of considering filing a series mark might be an appropriate solution for cost cutting, and same goes with 3-D marks, where product’s shape is included within the protection. But as this is not the case in many countries in the MENA region, I would go for the option of starting the initial registration for the most appropriate mark that complies and meets the applicant’s needs.

In summary, choosing the right mark for the registration is not a choice of one person or department, it is a choice of a company that might be very crucial to the future success of the trademark and helps better defend against any un-authorized use or infringement. The right formula will result in well defended and secured trademark.

That is why, my best advice on this is that the brand owners decide what they will register, consult with the local agent, if they are in agreement then proceed, if not and the difference is slight then they go ahead with the local agent advice, if the difference is big then they seek second local agent opinion and then decide.