Filing a trademark application for a word mark can be a powerful tool for businesses and organizations looking to protect their brand and intellectual property.

This article describes the Importance of a Word Mark Registration in Israel.   

A word mark is a type of trademark that consists of words, phrases, or slogans, rather than a design or symbol.

In contrast, a design mark is a type of trademark that consists of a design, symbol, or logo.

There are several reasons why businesses and organizations may choose to file a trademark application for a word mark rather than a design mark.

One major reason is that a word mark can be a more effective and efficient way to protect a brand.

A word mark allows businesses and organizations to protect their brand name and any associated slogans or phrases, which can be a key part of their brand identity.

This can help to prevent competitors from using similar brand names or slogans that could confuse consumers or dilute the strength of the original brand.

A perfect example can be learned from the recent case of the Israeli Trademark Office.

An applicant (shoe store) has filed a trademark application for the following designed mark in class 25:

 

The Trademark Examiner has refused the trademark application based on a similarity to a trademark registration for the word mark BUTTERFLY in class 25 owned by Tamasu Butterfly Europa GmbH:

 

BUTTERFLY

The applicant argued against the Examiner’s decision and requested a hearing before the Trademark Registrar.

The Trademark Registrar has reviewed the matter and rendered the following decision:

The test for the existence of a confusingly similarity is called the “triple test” and it includes the following tests:

1. The visual and sound test
2. The type of goods and marketing channels test
3. The specific circumstances test

Regarding the visual and sound test, it has been determined more than once that the marks must be examined as a whole, but with emphasis on the dominant features of the marks.

According to the Registrar, the dominant element in both marks is the word BUTTERFLY, and the addition of the words SUPREME QUALITY will not prevent confusion since the words are transparent to the end consumer.

Furthermore, the word mark BUTTERFLY was determined to be strong enough in the fashion industry to protect against different types of designs and that the design features of the requested mark, such as the green color and BUTTERFLY drawing, may not prevent confusion.

Finally, the Trademark Registrar has decided to reject the requested application based on likelihood of confusion to the BUTTERFLY registration.

This is an excellent example of why word mark registration is crucial for brand owners, as it guarantees better brand protection.

A note: It may be counterproductive for an applicant who already uses a trademark to request a hearing before the Trademark Registrar to clear the way for registration, since a judicial decision showing a likelihood of confusion may be used to support a claim of infringement by the owner of the cited mark.

The risk of a potential infringement claim can sometimes be higher than the risk of not having a registration.

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Disclaimer: Nothing in the above shall be considered as legal opinion whatsoever.