Trademark Protection Extending To Child Elements Of Mark ?

trajan

Registered User
Messages
165
Let's say a man sets up a business, Woulfe Footwear.
His graphic designer does him a wordmark logo that stylises the Woulfe part of the business name with a W shaped like a wolf's jaw.

Mr Woulfe intends using both the wordmark logo and the stylised W as logos depending on the context.
For example, his website will use the stylised W as a favicon (the small icon at the top left corner of the web page tab - just like AAM on AskAboutMoney.com web page tabs)) and on the outside of his customised shoeboxes.

So he registers the wordmark as his company logo at a total cost of €70 (app fee) + €177 (search fee) + 10 x €25 (10 years of registration fees, the minimum initial period allowed) = €497.

Now, does Mr Woulfe still need to register the stylised W as a separate trademark or will it be assumed to belong to him since it is an original and distinctive part of the already registered wordmark logo ?
 
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Steven Barrett

Registered User
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3,859
Don't assume anything. This is a very complex and niche area that you need to get expert advice on if you want the logo exclusive to your brand.

When I set up my company, I got my logo designed on 99 Designs. I have since seen it used elsewhere loads of time, even with an accountant firm that I do business with! :) . If your logo is going to be an important part of your brand, you need to ensure that you have it protected correctly.
 

trajan

Registered User
Messages
165
Some feedback on this based on my reading around and my engagement with a solicitor specialising in trademark agent work.

Firstly, he strongly warns against confusion of registering a trademark and registering a company name or a business name used by its owning company. AAM forums has been through this discussion before so I won't labour it. Suffice it to say that company names belong exclusively to you, business names only if they are trademarked and success in getting a business name mark (i.e. stylised business name with or without a logo) straight off, as opposed to getting it after years of trading and establishing a reputation and public association, precludes you selecting anything generic in text description, e.g. Irish Footwear, or graphically, e.g. an orange circle. Referring to my initial hypothetical example of Woulfe Footwear: this should be okay and receive an Irish trademark if no other Woulfe Footwear exists in Ireland prior to application and sufficient graphical distinctiveness is present.

As to any extraction of the stylised "W" graphic from the trademarked "Woulfe Footwear" wordmark, Mr Woulfe would not have got an Irish trademark for Wolfe Footwear in the first place if there wasn't something distinctive about his design and the stylised "W" would be an integral part of that. So the use of the stylised "W" on boxes would be okay provided that part of the logo was itself distinctive enough among other stylised "W"s already trademarked.
 
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