Trademark for a name or logo

What can and cannot be protected

Under Czech legislation, a trademark can be any sign, in particular words, including personal names, colors, designs, letters, numerals, the shape of goods or their packaging, or sounds, provided that it is capable of distinguishing the goods or services of one person from those of another person and being represented on the register in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection (Section 1a of the Trademark Act). The law therefore does not set a closed list of trademark types. What matters is whether the sign is distinctive and can be precisely described.

In practice, this means three basic choices for a company. A word mark protects the name in text form, a figurative mark protects a logo or other graphic element, and a combined mark protects the combination of word and image as a whole. Other types, such as color, sound, or shape marks, are possible but are used by companies with a specific reason, such as recognizable packaging or a sound logo. For most B2B companies, the first three are sufficient.

Protection always applies only to the goods or services for which the trademark is registered, and to the territory for which it is valid. A company must therefore choose the sign together with the list of goods and services for which it wants protection. A name that is distinctive for software may not be distinctive for another field, and vice versa. It is always assessed with respect to specific goods or services.

The basic registration procedure, i.e., where and how to file an application, how the proceedings work, and what the office examines, is summarized in the text on how to register a trademark. This article focuses on just one question: what exactly to enter in the application so that the protection corresponds to the company's actual brand.

Word mark: protects the name, not its appearance

A word mark protects a sign as a word or phrase. It does not protect a specific font, color, or placement, but the word itself, so a word mark protects the verbal designation without being limited to a specific font, color, or graphic design. For a company whose brand is a name, this is usually the most practical protection: if they change the logo, font, or colors, the word mark remains valid and continues to protect the name. In the event of a dispute, however, the similarity of the signs and goods, as well as the likelihood of confusion, is always assessed (Section 8).

A word mark is therefore the basic choice for most companies. A company rarely changes its name, as it is linked to its reputation, domain, contracts, and customers, while a logo is updated more frequently. A protected name gives the company the right to defend itself against similar names of competitors, regardless of what they look like. This is an advantage especially in B2B, where customers perceive the brand primarily as a name.

However, a word mark also has limits. The office will not register a sign that lacks distinctive character, or which consists exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of the goods or of rendering of the service, or other characteristics of the goods or services (Section 4 of the Trademark Act). A descriptive name like "Fast Accounting" will therefore usually not pass.

An exception is a sign that has acquired distinctive character in relation to the goods or services of the applicant through use in trade prior to registration (Section 5). A company that has used a descriptive name for a long time, and whose customers associate it specifically with them, can thus prove that it has become distinctive. However, this is a demanding path in terms of evidence, which is why it is better to choose a name that does not describe anything.

Logo: figurative and combined marks

A figurative mark protects a graphic element, i.e., a logo, symbol, or drawing, in its registered form. A combined mark protects a specific combination of a verbal and graphic element, for example, a name in a specific font with a specific symbol, as a whole. Both are registered as filed by the company, and the scope of protection depends on what is represented in the register.

A combined mark is narrower than it seems because it protects the whole. Therefore, it usually does not replace a separate word mark if protecting the name itself is crucial for the company. Changing the logo does not cause the registered mark to lose its effect; it continues to protect the form in which it was registered. Use in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered is also considered proper use (Section 13(2) of the Trademark Act). What matters, therefore, is whether the elements by which the customer recognizes the brand have changed, not how big the change is visually.

Rebranding therefore poses a risk. A company changes its logo, but the registered trademark remains tied to the old design, and the new design may not correspond to the scope of the original registration. A side effect may also occur: if the used form alters the distinctive character of the old trademark, after five years of non-use, consequences under Section 13(1) apply, including revocation of the trademark upon request of a third party (Section 31). Therefore, rebranding is planned together with the application for the new design and a strategy for what will happen to the old one.

For companies that frequently update their logo, a combined approach pays off. The name is protected by a word mark, which does not change, and the logo by a figurative or combined mark, which can be registered again when changed. Such a strategy costs more than a single application, but it covers both levels, and when the logo changes, you do not have to start from scratch.

When is one application enough and when are two needed

The decision depends on three things: how stable the name is, how often the logo changes, and how much the company can invest. If the name is stable and the logo is simple, a single word mark application is often sufficient. If the logo changes frequently or is a strong brand element, a second application for a figurative or combined mark is worthwhile.

With a limited budget, priority is given to protecting the name. For a stable and sufficiently distinctive name, a word mark is usually the most practical first choice because it is not tied to a specific graphic design. The logo is registered only when it has independent value, for example, when investing in a visual identity or when selling goods with the logo. The order is logical: it is harder to lose a name than a logo design, which is why it is protected first.

A simple test helps when deciding: what would the company lose if a competitor used a similar name, and what if they used a similar logo. For companies where customers choose by name, the answer is clear. For companies whose products are sold in packaging or in visually sensitive industries, the logo is more significant and is worth protecting right away.

Another consideration concerns where the brand is used. A brand that exists only in text, for example in contracts and offers, can get by with word protection. A brand that is on products, packaging, vehicles, and advertisements also needs logo protection because the customer recognizes it by its appearance before reading the name. Therefore, it is worth distinguishing the company by the way the brand appears.

What the office will not register and what competitors can challenge

During registration, the office examines absolute grounds, i.e., whether the sign is eligible to be a trademark, whether it has distinctive character, and whether it is not descriptive, deceptive, or contrary to public policy. A sign consisting exclusively of a shape resulting from the nature of the goods or a deceptive sign will not be registered (Section 4). Therefore, before filing, the company should verify that the name does not describe anything and does not lead to a misleading impression.

The second group consists of relative grounds raised by other owners. The applied-for sign will not be registered based on oppositions from the owner of an earlier identical or similar trademark if there is a likelihood of confusion (Section 7 of the Trademark Act), as well as based on oppositions from the user of an unregistered sign used in trade. Therefore, the company should conduct a search for earlier trademarks before filing.

A search is the cheapest way to prevent oppositions. It helps identify earlier identical or potentially similar rights for similar goods or services and subsequently assess the risk of opposition; similarity is not a mechanical finding, but a legal assessment. A company that applies for a name without a search risks paying fees and facing oppositions that will delay or block the proceedings. Protection against similar competitor brands and the connection with unfair competition are discussed in the text on trademark protection and unfair competition.

The owner of a trademark has the exclusive right to use it in connection with the goods or services for which it is protected, and no one may use a sign in trade without their consent if there is a likelihood of confusion (Section 8). A registered trademark thus gives the company a tool against similar names and logos of competitors, but only to the extent that it is registered. Therefore, the choice of name or logo has a direct impact on what can be defended later.

From listing brands to filing an application: five steps

The first step is to list what the company uses: name, abbreviations, logo, slogan, product names. Not everything needs to be protected, but the company must know what it has and what is important to it. The list is sorted by value and stability. The main brand name is usually in first place, product names and slogans in subsequent places.

The second step is a search. A lawyer will check whether there are earlier identical or similar trademarks for the same or similar goods or services and assess the risks of opposition. The result will determine whether the name is usable or needs to be modified. A search is always cheaper than opposition proceedings or a dispute after registration, saving both time and money.

The third step is the decision on the type of trademark. Depending on the budget and strategy, a word, figurative, or combined mark, or a combination thereof, is chosen. The fourth step is defining the list of goods and services: protection only applies to what is stated in the application, so the company chooses items based on actual activities and plans. The content of the list matters, not the number of classes. The fifth step is filing the application and monitoring the proceedings, including any oppositions.

A related situation, where someone has registered a domain with your trademark, is addressed in the text on what to do when someone has registered a domain with your trademark. A protected name gives the company a stronger position in such disputes as well.

How established companies protect their brand and what is a warning sign

Established companies have a word mark for the main brand name and a figurative or combined mark for the logo, if it is significant to them. When rebranding, they apply for the new design even before publishing the change and maintain the old one as long as it is useful. Companies also keep track of their trademarks with renewal dates and evidence of use.

A warning sign is a company that has a logo but no registered trademark. The second sign is an overly narrowly defined list of goods and services, even though the company operates in several fields. The third is a descriptive name that the company has been using for years without protection. The fourth is a trademark registered without a clear reason to an agency, supplier, or executive director instead of the company that should own the brand in the long term. Registration in the name of an executive director is not illegal in itself, but it complicates the sale of the company, licensing, and termination of cooperation.

For companies planning a sale, keeping brands in order is part of the preparation. During due diligence, the buyer asks what is registered, who owns it, and whether it corresponds to what the company uses. Clear protection of the name and logo is an asset that increases the company's credibility, while unclear protection raises demands for guarantees and reduces the price.

It is also advisable to establish rules for brand use within the company. Who is allowed to use the logo, how variants are handled, and who approves new product names to prevent the creation of unregistered signs that later require special protection. The rules do not have to be long; a single page with clear responsibility is enough.

Four mistakes when choosing a name, logo, and classes

The first mistake is to apply only for a logo. A company invests in design, applies for a logo, and after changing its visual identity, finds that the registration remains tied to the old design and the name is not protected at all. The price is a new application and the risk that someone else has registered a similar name in the meantime.

The second mistake is to apply for a descriptive name. A company chooses a name that says exactly what it does, and the office rejects it as descriptive. The cost is lost fees, time, and the need to start over with a different name. It helps to choose a name that is distinctive, rather than just understandable, and to verify it before filing.

The third mistake is to apply without a search. A company files an application and, after publication, receives oppositions from an earlier similar trademark. The proceedings are delayed and may end in rejection. The fourth mistake is an overly narrowly defined list of goods and services: the company operates in multiple fields, but the trademark covers only one. The Czech legal team at the Prague-based ARROWS law firm will therefore review the name, logo, list of goods and services, and brand strategy before filing.

Risks of poorly chosen brand protection

Final Summary

What a company should register depends on what changes the least about its brand. The article showed that a word mark protects a name without being tied to a specific graphic design, that figurative and combined marks protect a logo in its registered form, and that if the logo changes significantly, the new design may not correspond to the scope of the original registration, and that a search before filing is the cheapest protection against oppositions.

For company management, this implies a clear procedure: first protect the name with a word mark, then register the logo according to budget and stability, and always conduct a search and define the goods and services based on actual activity before filing. The reverse order leads to the company paying for protection that does not cover the most important aspects.

The Czech legal team at the Prague-based ARROWS law firm designs brand protection strategies, conducts searches for earlier trademarks, prepares applications, and represents companies in proceedings before the office. Write to us at consultation@arws.cz or check out our service for contracts and negotiations.