4 Considerations to Make Before Registering a Composite Trade Mark
Complex businesses often have complex trade mark requirements. A composite trade mark is a great way to differentiate your business from your competition. It is a unique indicator of the good or service that your business provides. However, there are a number of considerations to make before you apply to register your composite trade mark. This article will explore what some of these key considerations are.
1. Is it a Composite Trade Mark?
The first thing to consider is whether your trade mark meets the criteria. A composite trade mark is a trade mark that consists of any combination of:
- colours; or
that, when taken as a whole, distinguish your goods or services in the market from your competitors. The law on trade marks assumes that novel combinations generally are more likely to be distinguishable because of the sheer number of possible combinations of sounds, devices, shapes or words etc.
For example, say you run a logistics consulting company that wanted to combine the words “Interconnected World” with a picture of a globe with bright lines intersecting all of the graphics. You would likely have a composite trade mark that would be registrable.
This is because the graphic, the business services and the words all relate to one class of goods. Therefore, it likely can differentiate the logistics consulting services provided by you from your competitors.
2. Previously Rejected Trade Marks
It is worth considering that if you have had a phrase rejected from being trade marked, it may become a registrable trade mark if you combine it with another distinguishing graphic or other descriptor. This is because it is generally not a requirement to consider whether the component parts of the trade mark can be distinguished from other competitors and therefore able to be trade marked.
For example, a combination of two elements that individually may not be able to be registered may become registered as a composite trade mark due to the uniqueness of the combination. However, this is not a hard and fast rule and will depend on the facts and circumstances each time.
3. Limited Protection
It is important to remember that a composite trade mark only affords protection for the trade mark when taken in the composite. If you use a component of the trade mark by itself, it is not a protected feature of the trade mark and you may not be able to be prevent its use by others.
For example, say you trade mark the phrase ‘Ready to Ride’ with a horse emblazoned across the top of the phrase. If another person used the phrase ‘Ready to Ride’, you would have limited recourse against them using that phrase. This is because ‘Ready to Ride’ is a component of the entire composite mark and not a trade mark itself.
4. What is Not a Composite Trade Mark?
Some elements are more difficult to register than others as part of a composite trade mark. If you use geographical elements or your composite design cannot distinguish your goods or services from competitors when taken as a whole, you might have difficulty in getting it registered.
Geographical names generally cannot be trade marked. Composite trade marks containing a geographical name and another graphical element, however, can be trade marked if they are unique enough. The additional elements of the trade mark must be sufficiently noticeable and differentiate the geographical mark. For example, a geographical mark surrounded by decorative leaves or scrolls may not be distinct enough to be trade marked.
Suppose you can register a component part of the trade mark by itself. This does not mean that, when incorporated into a composite element, that the requirement for the mark to be distinguished from other goods or services when taken as a whole is satisfied. For example, this may be because the graphic you choose is too similar to the graphics chosen for a competitor operating in the same industry.
Before deciding to register a composite trade mark, you should consider:
- whether the combination of elements you are looking to trade mark when taken as a whole are sufficiently unique;
- what your plans are for your trade mark; and
- whether you can register a standard trade mark instead.
Frequently Asked Questions
It can be a combination of sounds, smells, images, text, words and phrases, among other things.
A geographical element is an element of a trade mark that refers to a specific place.
You should respond to the matters set out in the adverse report, and provide the requested information.