Trademark for a name or logo

What can and cannot be protected

A trademark can be any sign, in particular words including personal names, colors, designs, letters, numerals, the shape of goods, their packaging, or sounds. The law sets two conditions: the sign must distinguish the goods or services of one person from those of another person, and it must be possible to enter it on the register in a manner which clearly and precisely determines what is protected (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 options for a company. A word mark protects the name itself, regardless of its graphic representation, while a figurative mark protects a specific logo or other graphic element. The third option is a combination of the two, i.e. joining the name and graphics into a single whole. Such a sign is commonly referred to as a combined mark, although from a legal point of view it falls into the category of figurative trademarks.

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. The office and the courts therefore always assess distinctiveness in relation 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 protects the word itself, not a specific font, color, or placement. 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 a dispute, the court usually compares the similarity of the signs, the similarity of the goods or services, and whether there is a likelihood of confusion. For an identical sign used for identical goods or services and for a mark with a reputation, it does not examine the likelihood of confusion (Section 8(2)(a) and (c) of the Trademark Act).

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. Nor will it register a sign consisting exclusively of indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production, 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 so-called combined marks

A figurative mark protects a graphic element, i.e., a logo, symbol, or drawing, in its registered form. A so-called 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. The scope of protection therefore 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 important 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. If the new design alters the distinctive character of the old trademark, it does not count as use of that trademark. After five years of non-use, the office may then revoke the old trademark upon request of a third party (Section 13(1), Section 31). Whether the new logo still corresponds to the registration depends on the elements by which customers recognize the brand, which is why the lawyers at ARROWS law firm assess each rebranding individually.

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 protects both levels, and when the logo changes, the company does 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, protecting the name takes priority. 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 need only be registered once it has independent value, for example, when investing in a visual identity or when selling goods with the logo. The order makes sense: losing the name harms the company more than losing the logo, which is why the name 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 it is worth protecting it 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. The scope of protection should therefore match where and how 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 office will not register the applied-for sign if the owner of an earlier identical or similar trademark files an opposition against it and there is a risk of confusion (Section 7 of the Trademark Act). An opposition may also be filed by 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 reveals earlier identical or similar rights for similar goods or services and makes it possible to 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 for the goods or services for which it is protected. No one else may use a sign in trade without their consent if there is a risk 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 company then sorts the list 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. The risk of opposition depends on the specific earlier trademarks and the goods for which they are registered. The lawyers at ARROWS law firm therefore evaluate the search results separately for each application.

The third step is the decision on the type of trademark. Depending on its budget and strategy, the company chooses a word, figurative, or combined mark, or a combination thereof. 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 dispute over a domain bearing a name protected by a trademark is discussed 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 the logo 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. Unclear protection, on the other hand, raises demands for guarantees and reduces the price.

It is also advisable to establish rules for brand use within the company. The rules determine who is allowed to use the logo, how its variants are handled, and who approves new product names. This prevents the company from creating unregistered signs that later need their own 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 and applies for a logo. After changing its visual identity, it then 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 distinctive name, not just an understandable one, and to verify it before filing.

The third mistake is to apply without a search. A company files an application and, after its publication, receives oppositions from the owner of 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. Figurative and combined marks protect a logo in its registered form, so after a significant change to the logo, the new design may not correspond to the original registration. 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.