When embarking on the journey to trademark your brand, one of the main questions you might ask yourself is whether to file your Company logo and name individually, or together as a combined trademark.
Well, this is a strategic decision. There are pros and cons for both ways.
To provide a clearer understanding, we will use iPhone trademarks as illustrations.
Apple Inc. (“Apple”) opted for filing separate and combined trademarks for the name and logo of their iconic phones. For our more studious readers, the nitty gritty details can be found in the table below:
Trademark |  |  |  |
Malaysian TM Registration No. | 06017611 | 02003189 | 07025213 |
Type of Trademark | Stylized Word Mark (Single element) | Figurative (Single element) | Word & Figurative (Combined elements) |
Classification | Class 9 | Class 9 | Class 9 |
Their decision to file their iPhone name and Apple logo separately is an obvious choice, it provides them with a greater flexibility in usage. This allows Apple to use the name iPhone & Apple logo separately (as seen on the back of an iPhone) or together (as seen on iPhone boxes). This flexibility offers a wider scope of protection, enabling the owner to control the narrative on how their brand portfolio grows.
FILING SEPARATELY
The Pros?
As seen from above, one of the significant advantages of filing your trademarks separately is that you get to use them separately or combined, which offers greater flexibility. Another advantage is that, when they are filed separately, if one application encounters a refusal from the Registrar, the other may continue on its successful journey to registration.
The Cons?
The only disadvantage of filing separately would be, unsurprisingly, higher costs of filing and maintenance, which would usually increase according to the number of registrations.
FILING COMBINED
The Pros?
Naturally, the costs are lower. In this instance, it may be more economically feasible for new companies that are just starting out to opt for a combined application.
The Cons?
The protection of the trademark is limited to the combined version as per the registration. In some cases, the evidence of separate use of the marks may not be acceptable as evidence to support the registration of combined mark.
Therefore, it is only advisable to file the trademarks as combined if you are certain that you will always use them in that form.
CONCLUSION
Whether to file a trademark separately or opt for a combined application, ultimately hinges on the future trajectory you envision for your brand. Thus, it is always advisable to share with your Trademark Agent (coincidentally, we know a really good one) on how you plan to use your trademark and they will be happy to devise a registration strategy for you.
If you have further questions, you can always contact us! Otherwise, if you are not too fond of social interaction, you can always wait for our next article in our blog; The word on the street is that our postings may become more frequent, please keep a look out for it!
Written by,
LL.B (HONS), CLP
Registered Trademark, Patent and Design Agent
LL.B (HONS), CLP
Advocate & Solicitor (Non-Practising)
Disclaimer: The above information is merely for general sharing and does not constitute any legal advice. Readers are advised to seek individual advice from professionals.
© 2023 by IP Gennesis Sdn Bhd.
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