Just imagine that you have a logo that is famous around the world. But this logo combines a word element and graphic elements. Of course, you want to protect the graphic elements as well and you file a device mark. But often the wordelements are regarded dominant in combined device marks. And that is where you hit the boundaries of trademark law.
Coca-Cola had recently a tough fight up to the Court of Justice in the EU just to fight against the logo Master written in the typical “Coca-Cola”-letters. The Court of Justice probably had a look at the actual use of Master (white letters on a red background). They must have thought “enough is enough” and found a somewhat artificial u-turn to rule that the trademarks were similar.
But Starbucks has no luck: a recent opposition against COFFEE ROCKS has been rejected by the OHIM. Various elements differ (especially the words), according to the OHIM while it is kind of obvious that the contested mark took the Starbucks logo as a start.
So, what should you do to protect the graphic elements of your logo (if this logo also consists of a word)? Think of a design registration. Words do play a role in the protection of a design registration but only visually (a judge will see that there is a word on that place instead of COFFEE ROCKS). Interestingly, Starbucks did register its logo as a design, so we wonder whether this story will get a sequel (as a cancellation action based on the design).
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“Trademark protection gives freedom to do business.”