15 September, 2020
A Trademark application has various categories to cover the different aspects of a trademark. These have been explained thoroughly in the previous blog post — What are the different categories of Trademark Registrations in India.
The most commonly applied trademark categories are the Word Mark category and the Device Mark category. These categories cover the most important aspect of the trademark, the pronunciation, and the visual impact of the brand name. So, which is the trademark category which you should be choosing among these two to proceed with your trademark application? In this article, we will try to explain the core factors underlining these two categories.
Word mark category covers the trademark, letter by letter. For unique brand names, names which have no meaning of any sort, or which have been coined by its owners after due research but is completely new and has never been heard before, the best approach is to register their trademarks under the category of – Word mark. By doing so, you are asking for the right over the complete word which you have coined for your business. Once you obtain this right after getting your trademark registered, it gives you protection over use of that word in any way possible. It will protect the word for you even if somebody else is using it in any different language but in the same country’s jurisdiction. It will also protect your brand name even if there is a different logo image being used by anyone else along with the brand name. The word mark category thus applies the most protection for any brand name but is the toughest to get as well. The registrars examine a word mark application more strictly than other category trademark applications.
The device mark category covers the trademark in logo along with the trademark. For brand names which are common in nature of have a part of them matching an existing trademark application, it is suggest to apply under the Device category. A Logo image is attached along with the word mark while filing of the trademark application. It indicates that the word mark will be used in association with the logo all the time. It also states that the logo will be used to relate the word mark for the public in trade. Thus, the trademark is protected only in association with the logo. Hence, if you face an infringement of your trademark, where the infringer has used your brand name but is having a different logo to represent his business, you will not be able to take action against him with the use of your trademark registration certificate. This type of category is taken as additional certification after obtaining the word mark trademark registration mentioned earlier. Or, as mentioned earlier, it becomes easy to get the trademark application accepted by the registrar if applied under this category when there is a similar trademark application already on record. But, that trademark application should not be a Word Mark application, then the chances are none.
Thus, It is very important to understand the legal limitations of each category, thus to completely secure your trademark, if at all you are required to take any legal action against anybody in the future.
Many a times you feel that getting the logo registered along with the trademark at the same cost will be the best thing to do. But this particular offer comes as a disguise to the loss you face when you have to stop someone using your brand name with a different logo as your competitor in the trade of your business.
For detailed guidance, you may contact us by filing our form on our – Trademark Registration – page.
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;
The trademark name search tool at Vakilsearch lets you find the previously registered trademarks to avoid copyright infringement.
Includes words, letters or numbers. It is not mandatory that the words should convey any meaning
Device Mark
Includes logos, labels, slogans, taglines or monograms, drawings and designs
Colour
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
Sound 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.
Advantages
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.
Disadvantages
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.
Advantages
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.
Disadvantages
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: https://ipindia.gov.in/ 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.
Also, Read
- Importance of Trademark Registration
- Details about Indian Trademark Law
- How to Register a Brand Name and Logo in India?
- Is Trademark Registration Compulsory For E-Commerce Companies?
- Trademark Registration: Procedure, Renewal, Advantages
The mega-commercial world of big businesses and e-commerce industries nowadays depends highly upon effective marketing and branding strategies. Products, companies, and even individuals are involved in representing brands these days. Extensive media surrounds our daily life through different modes, and a majority of these are engrossed into marketing of popular brands. Whether it is soaps or cars, books or shoes, big brands are marketing themselves everywhere, every time, and in every possible way. Among the various tools used by businesses for branding and marketing, intellectual properties like trademarks, patents, and designs have been proven to be the most effective and efficient instruments that have successfully stood the test of time.
Table of Contents
Among all the types of intellectual properties, this article specifically discusses Trademarks and its categories in a detailed manner. Trademarks are unique creations that entitle ownership to the creators and protect them against the plagiarism or misuse of such creations. Trademarks are regulated under the Trademarks Act, 1999, which clearly defines the rights of its owners, and the legal consequences of its infringement by any individual and non-individual entity. For the better understanding of our readers, we have also provided the top 5 illustrations of trademark disputes in India.
The term Trademark is defined in section 2(zb) of the Trademarks Act, 1999, according to which Trademarks are marks capable of graphical representation that can distinguish goods or services of one business from that of the other. Trademarks are one of the most valuable assets for modern business. These are unique marks, signs, and symbols representing the brand of the businesses in the market, and forming their unique identity to enhance their popularity and recognition among potential buyers. Businesses usually have a number of IPR assets that can be identified as their Trademarks such as their legal names, trade names, brand Name, logos, product names, product labels, punchlines, taglines, audio tunes, and the domain names. Among these, most trademarks generally remain unidentified by businesses which lack the knowledge of the need and relevance of owning trademarks.
Trademarks can be divided into two broad categories, namely, word marks and device marks. While trademarks in the form of words, like names of businesses can be identified as wordmarks, device marks include specific symbols like logos and labels that uniquely represent the businesses in the market. The following marks unique and original to businesses can be eligible to be identified as their trademarks, according to Section 2(m) of the Act.
| S.No. | Word Marks | Device Marks |
|---|---|---|
|
1. |
Names |
Logos |
|
2. |
Signatures |
Labels |
|
3. |
Taglines |
Audio tunes |
|
4. |
Slogans |
Images |
|
5. |
Punchlines |
Shapes |
|
6. |
Domain Names |
Colour Combinations |
Logos, Pictures, and Drawings
With those resounding words, don’t you think we need an attractive image or logo, picture, or drawing to heighten the effect? According to the nature of the product, the accompanying photograph illustrates the depth like a picture book with words and pictures working together. Living in a digital world where millions of images and videos are exchanged every day, we understand the idea well.
In this forest of media around us, brand names are the most well-known marketing instruments. Whether such names have a clever origin, are gimmicks like TOSS, or an honorable company proprietor name like TED, their marketing becomes the highest priority for businesses. Most logos and symbols representing products and companies would not have been as impactful as they are, without their brand value. These words gradually become the most significant set of words for popular advertising and marketing of businesses.
For instance, if you decided to set up a factory to manufacture biscuits, your first thought would be finding a suitably dramatic word to represent your brand. Let us say that you decided to name your brand as CRUNCHY, you shall have to then register it as a wordmark. You can also go beyond a single word and add other characters and words to extend it into a slogan or a tagline.
How about a few examples?
- CRUNCHY 900
- CRUNCHY ASAP
- CRUNCHY FOREVER
- CRUNCHY TIMES
- LOVE YOUR CRUNCHY MOMENTS
Each name mentioned above can be registered as a wordmark. Registrations of wordmarks would mean that none other than its owners are entitled to its use. Moreover, registrations as wordmarks enables its owners to sue parties who plagiarize or misuse such wordmarks, and impose hefty penalties on them.
Device Marks
If you decide to register CRUNCHY along with an image of a child holding a biscuit and your company logo, too, you can do so by registering these as device marks. Aside from the words and numerals earlier registered, you now enjoy the privilege of using the combinations of images, logos and pictures, for the branding of your business.
Colour, Shape, Sound and 3D trademark combinations
Even if the stringent laws related to trademarks, and the complex procedure of its registration gets simplified, professional rivalry between businesses will probably disturb the peace and harmony of the markets. Stealing the thunder of popular businesses nowadays seems to be the norm in the competitive domestic and global markets. Hence, businesses are required to diversify their choice of brand representation, in order to protect their originality and uniqueness. For this, aside from common word and device marks, one may also register minor differences like color and style of fonts, theme music, signature tunes, and advertisisng jingles.
Why are Trademarks Disputable?
Glancing at the print, broadcast, and digital media, we observe that many companies dealing in similar products use identical word and device marks for their marketing and branding. This often confuses and misleads buyers in buying pirated and fake products instead of original ones. Moreover, a plagiarised product in the market has the potential to bring down the brand value of the original product, quite steeply and rapidly. It is for this reason that the original owners of intellectual properties have been provided with the option of registering them, and acquiring legal protection against their plagiarism and misuse. Parties that plagiarise or unintentionally use similar / identical trademarks, can be sued by the original owners of such trademarks, thereby resulting in the imposition of hefty penalties and fines on the defaulter.
Top 5 Illustrations of Legal Disputes Arising Out of Trademark Use
- The case involving the terms Ayur and Ayu
- Ayurcare
- Himani Ayurdhara
- Himani Ayucare
- Montblanc and New Delhi Stationery Mart
- Arvind and Hahnemann Laboratories
- Ansari Bilal and Shafeeque Ahmed
Both terms appear similar and connected to the word Ayurveda which is a system of traditional Indian medicine. According to the plaintiff, they have exclusive rights due to the registration of both terms Ayur and Ayu. The plaintiff complains that the defendant has applied to register the following terms:
Such clashing of interests is relatively common in the business world. According to Plaintiff, they use the terms Ayur and Ayu in manufacturing and selling essential oils, hair lotions, cosmetics, and shampoos.
Wordmarks “Spacewalker” and “Starwalker” can probably confuse the minds of the general public. The defendant used Spacewalker, while the Plaintiff has the word mark Starwalker registered for itself. Besides similar wordmarks, the dispute concerns a three-ringed device mark with similarity in shape and configuration.
In words EYLEX and EYETEX, EYE is the word common to both. The defendant used LEX, while the plaintiff used TEX. LEX and TEX are quite similar and, since they are being used by two different brands, they might be misleading for the buyers. Besides being a registered word mark, EYETEX also owned a device mark with an artistic drawing of a lady’s eye.
4.Praba’s V Care Clinic and I-care Clinic
“CARE” is a term representing public welfare and hence cannot be used by any business. However, this would have been an issue if the word “CARE” was being used alone. Here, since the word “CARE” is a part of the whole trademark, and since comparison needs to be made on the whole wordmark rather than a specific part of it, the usage of the word “CARE” by both businesses does not violate trademark rules.
The defendant claims that the calligraphy they have used is quite different from what the plaintiff uses. Quoting the registration number, the plaintiff claims ownership over the word mark NAGEENA, which is also being used by the defendant
Conclusion
Entrepreneurs and business owners usually lack a complete knowledge and overview about relevant legal concepts like Intellectual Property Rights. In this article, we have tried our best to provide a wholesome overview about trademarks and their relevance to businesses and their brands. However, the information that we have provided here is just the tip of the iceberg, as trademark is a complex legal subject that demands time and patience for a thorough understanding. As we have a robust team of legal consultants with years of knowledge and experience in working with trademarks, we advise you that you avail of our consultancy services for a comprehensive perspective on trademarks that might help you in your future endeavors. All you have to do is visit our official page on trademarks and send us your query and we will respond to you in no time.
Trademark is the brand name or logo that represents a business. A business sells goods or renders services under a trademark. It is a mark that is capable of distinguishing the products of the business from its competitors.
The trademark may be a name, number, design, combination of letters, or colours. It is a unique mark that indicates the source of the goods or services. Trademark owners/proprietors can obtain trademark registration for distinctive catch-phrases, business names, taglines, logos, and captions in India.
Category of Trademarks in India
There are different categories of trademarks in India, such as word, logo, colours, etc. Each trademark category requires a separate registration. The trademark proprietor can choose only one category of the trademark in the trademark registration application. The different categories of the trademark are:
- Word Mark – A word mark includes one word or a combination of words, letters, or numerals. The word need not have a meaning. It can even be a combination of random letters with or without numerical.
- Device Mark – A device mark includes any sticker, label, logo, monogram, or any geometrical figure other than a word mark. It contains drawings and designs.
- Colour – It consists of a colour or combination of colours with or without a device mark that is distinct from others.
- Three-dimensional trademark – It includes packaging or shape or of goods of certain products such as the Xbox 360 logo, whiskey bottles, etc.
- Sound – A tune that distinguishes the services or products offered by an entity can be trademarked.
Device Marks in Trademarks
A device mark is a graphic image or design, which may or may not have words. The device mark may be represented along with colours. However, if the proprietor of a trademark obtains trademark registration for a logo or design containing colours, then the same colours have to be used throughout to seek trademark protection.
When trademark proprietors wish to obtain trademark registration for a particular stylised appearance or a combination of stylised wording, colour, shape, and design, they must choose device mark registration in the trademark application. Registering a device mark prevents the third parties from using a similar logo or design for their products or services, rather than the words incorporated in the logo.
Examples of a device mark trademark are – The Android symbol, Apple Logo, etc.
Pros and Cons of Device Mark Registration
The device mark is visually appealing to people and eye-catching. It is easy for people to remember the design rather than the words attached to the goods or services. When the design or logo with unique elements is used on various materials, it will help the business get recognition and build business image and goodwill.
For example – The Apple logo is recognised universally without having any brand name attached to it. People recognise it just by seeing the unique apple design.
The drawback of a device mark is that there is no flexibility. No flexibility means that the mark has to be used in the same way as it was represented in the trademark registration application. If any slight changes are made to the design, the original trademark registration will not protect the design.
Another drawback of a device mark registration is that the trademark search for a logo or design mark is more complicated than a word mark search. The proprietor needs to provide additional necessary information during registration, such as drawing of the logo, description of the logo, etc.
Word Marks in Trademark
A word mark contains the registration of only the words or letters as a trademark. In a word mark registration, attention is not given to the style or manner in which the words or letters are written, represented, the font size used, design attached with the words or any other graphic feature of the letters or words. The trademark protection is granted only for the brand name. It is the most common category of trademark registration.
Once a trademark proprietor obtains registration for a word or combination of words or letters or numerals, the proprietor gets the right to use and represent the word in any font or format. It grants an exclusive right to the proprietor to use the word as a whole irrespective of its style for the goods and services for which registration is obtained.
Examples of a word mark are – IBM, TATA, etc.
Pros and Cons of Word Mark Registration
The advantage of registering a word mark is flexibility. Flexibility means that the words or letters can be represented in any manner, style, font or design. Thus, the word mark ensures broader protection. However, the spelling of the word or words should be the same as stated in the trademark registration application.
Registering a word and a logo can be expensive as two applications have to be filed separately. Instead, the trademark proprietors can register the brand name and represent it with the logo of their choice.
The con of a word mark is that it is not visually appealing. Thus, the brand name may be difficult for people to remember. Plus, if the proprietors keep changing the representation of your word mark, it might confuse the consumers and may be difficult for them to remember.
Device Marks and Word Marks Trademark Registration
The trademark proprietors must decide whether to apply for a word mark or device mark registration before filing the trademark application. They must decide whether to get only the brand name registered or only the brand logo or apply for the brand name and logo registration separately.
Usually, the brand name of businesses contains both words and logos rather than just a logo. Ideally, business proprietors have to file separate trademark applications for word and logo to attain the broadest protection for their business. However, filing two trademark applications for both name and logo would be expensive. Thus, it is better to register the trademark as a word mark since it can be represented in any manner and ensures broader protection than a device mark.
For example – The Microsoft company has a trademark registration for the word mark, i.e. their brand name ‘Microsoft’. They recently changed their logo. If they had obtained registration for their logo as a device mark, they had to obtain a new registration for the changed logo by filing a new trademark application. The initial trademark application for the first logo would not protect any of the subsequently created logos. Since Microsoft registered their trademark as a word mark, they could change their logo without any hassles.
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Difference between wordmark and logo mark
A trademark is a vital tool in protecting the identity of a business. It helps people recognize the source of the products or services they use. As such, it helps in building the goodwill of a business. Given the importance of a trademark in any business, you must be very careful when choosing your trademark. There are two common kinds of trademarks: wordmarks and logo marks (device marks). When filing a trademark application, the most common dilemma is choosing a word mark or a logo trademark.
What is a word mark?
A word mark is where you only seek to register the words or letters. This means that only the combination of words or letters is registered. No attention is paid to the style in which the letters or words are represented, design, font size, or any other graphic feature of the words or letters. The words or letters are registered irrespective of their manner of representation. You seek protection for the words or letters.
Let’s take an example to understand this well. Let’s say I want to register the words FEATHER WIN. If I choose to register it as a word mark, then only the words FEATHER WIN will be registered. Nothing matters, be it the font size, the style, all caps, or not. As long as the spelling remains the same, once registered, I can choose to represent the word mark however I want.
What is a logo mark?
A logo mark (device mark) is a graphic design or image which may or may not have wordings. It is a stylized logo. You can choose to represent the design with color or in black and white. If you represent the Logo in color, then you will have to use the same colors throughout. You cannot choose different colors from what you registered as a trademark.
If FEATHER WIN was represented like this:
It would be a logo mark. If this Logo is registered, you must use the same Logo with the same violet and red color combinations whenever you are depicting the Logo. Here, it is also essential to understand that the Logo is the design that is described above, and the brand name is FEATHER WIN. So, while registering a design mark, you can choose whether you want to incorporate the brand name in the Logo or not. If you’re going to register just the Logo without the brand name, you can do that if you want to register FEATHER WIN as a logo mark without the brand name on it.
Pros of registering a mark as a word mark:
Flexibility is the most important advantage of registering a mark as a word mark. As already stated above, a word mark protects only the words or letters. This means that a word mark can be represented in any manner. A word mark, therefore, ensures broader protection as the words are protected irrespective of style. You can vary the design aspects of the word without worrying about losing trademark protection. You only have to ensure that the spelling of the word or words remains the same.
Moreover, if you want to register the Logo, as well as the word, as trademarks, it could turn out to be an expensive affair. Instead, you can register the mark as a word mark and represent it with the Logo of your choice.
For example, if I have registered FEATHER WIN as a word mark, I can choose to use it in any manner that I like.
I can tweak its representation as long as the words FEATHER WIN are there. This means that a word mark gives broader protection as you can change the mark’s appearance at your convenience.
Cons of registering a mark as a word mark:
Because the function of a trademark is to help people recognize the source of the goods or services they are using, a logo mark has more visual appeal, making it easier for the consumers to recall it. An eye-catching design will make a strong impression on the consumer’s mind. Moreover, if you keep changing the representation of your word mark, it might confuse the consumers. Consistency is the key to enabling recollection by consumers.
Pros of registering a mark as a logo mark:
A logo mark is more visual. People are generally attracted to visually appealing things. An eye-catching design will make it easier for consumers to remember the source of the goods or services they use. If the design elements are unique identifiers, are essential to the business, and are used on a wide variety of visual material, getting the mark registered as a logo mark will go a long way in building the goodwill of the business. Take APPLE, for example. As shown in the above image, the Logo of apple does not have the brand name written on it. Yet, just seeing the Logo, people know that the goods belong to APPLE. That is how far a logo can go in building the image of your business.
Cons of registering a mark as a logo mark:
One problem with a logo mark is that there is no flexibility. This means that you have to use the Logo exactly as it was represented in the registration application. If you make any changes, you must get another trademark registration.
Another problem with registering a mark as a logo mark lies in the registration process. The trademark search for a logo mark is more complicated than a word mark search. Also, a logo mark application needs more work. In addition to the necessary information, you must provide a logo device (drawings). You have to describe the Logo in specific detail. However, the experts in the field can get you through this problem quickly.
Therefore, word marks and Logo marks both have pros and cons. It ultimately comes down to your requirements, target consumers, and how you want your business to be identified.
| PROS | CONS | |
| WORD MARK | 1. Flexibility
2. Wider Protection |
1. Not visually appealing |
| LOGO MARK | 1. Visually appealing
2. Easy recollection |
1. Narrow protection |
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