Word Mark vs Design Mark: The Scope of Protection
In principle, if the mark includes a
particular style of lettering, or a design or logo, the mark is considered to
be stylized or in special form. In reality, however, not all
trademarks employ designs and colors. Trademarks actually come in two flavors:
(1) standard character marks and (2) special form marks. The scope of protection
between Word Mark and Design Mark COCA-COLA standard
character mark Special
Form Mark A standard character mark, also known as a “word mark,”
consists solely of words, letters, numbers, or a combination thereof. A word mark makes no claim to design element,
stylization of the letters or the numbers, colors or size. When applying for these types of marks, the trademark would
be protected for the core of trademark such as structure, pronunciation and
conception of the mark (if any). Registering a trademark in
standard characters provides the broadest rights for the trademark owner
when the mark primarily consists of words, letters, and numbers. It allows the
owner to use those words, letters, and numbers in any manner, i.e. design,
without worry about losing the benefits of a trademark registration. However, styles and colors of the marks will not in
the scope of protection of the registered mark. A special form mark, also known as “design mark” comprises stylized
words, letters, numbers, or a combination thereof, and/or a design element
(i.e., a logo). The design may appear by itself, or combined with the stylized
words, letters, and numbers. With a stylized mark, the trademark owners are limited
to protection for the chosen font, color, or design that you submit to the
Trademark Office. Whereas, with a standard character mark, the owner may have
protection for the words, letters and numbers comprising your mark in many
different forms with various fonts, colors, and designs. However, when applying for these types of
marks, the rights to use the stylized marks would be limited since it does not
allow the owner use those mark in any manner. If the owner changes its logo
design, color or font, the owner will have to file a new trademark application
to protect a future change. The relationship between Word
Mark and Design Mark - Priority Whether an earlier standard character
mark may be considered as a ground to claim priority for applying for this mark
in a special form mark? The answer is no because the basic to claim priority is
based on the same mark applied for (it means that two marks applied for are
identical). On the contrary, an
earlier stylized mark may be a basic to claim priority
for applying for the mark in stander mark sine the impact of the rights to use of
these types of marks broadly. - A legal basis for refusal of protection Whether an earlier standard character
mark may be considered as a cited mark to refuse protection of the mark in a
special form mark? The answer is no because two marks
are displayed in different manners, not considered to be identical. - A proof of use Whether a standard character mark may
be considered as a proof of use of the mark in a special form mark? The answer is no because a special form mark actually does
not use. On the contrary, a stylized mark
may be a proof of use of the mark in stander mark sine the impact of the rights to use of
these types of marks broadly. Conclusion Vietnam law does not provide on the
scope of protection of the standard character mark and the special
form mark. However, in practice, the right of standard character mark owner as
well as the relationship between Word Mark and Design Mark are applied almost
the same as the above. TVH and
PVKT About Pham & Associates Pham & Associates is an
intellectual property law firm in Vietnam. We provide counsel and
representation in every area of patents, trademarks, copyrights, enforcement of
intellectual property rights as well as their representation in arbitration and
litigation proceedings etc. For further information about our organization and
services, please visit our website: www.pham.com.vn
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