Shaping up your IP protection
Carrie Johnson, patent attorney and partner continues Barker Brettell’s series on design protection by looking into how designs and trade marks complement each other.
Trade mark and design registrations can both protect a logo, shape or the look of a product.
Trade marks
A registered trade mark is a badge of origin, protecting your goodwill and reputation. Registration can last indefinitely (on payment of renewal fees every ten years) but is limited to specific goods and services. Registration involves formal examination to check the mark is distinctive, not descriptive, and not customary in its’ current language or trade. (Acquired distinctiveness, through use of the mark, can overcome this but requires gathering at least five years’ worth of evidence.)
However, when it comes to trade marking a 3D shape, registration can be very difficult. It is possible to register a 3D shape, but not if it consists exclusively of a shape dictated by technical function or which gives substantial value to the goods. It is more usual to protect the shape using design registration.
Registered designs
Registered designs, on the other hand, are available for pretty much any 2D/3D design, including products, logos, patterns, computer icons and even moving images. They are not restricted to any particular goods or service, although there are exclusions to features that “must fit” or “must match” others. They can last up to 25 years if maintained which, given even the most iconic designs change over time, is often enough.
To be valid, a design must be novel and have an individual character: it must create a “different overall impression” than any other design on an “informed user”. There is no substantive examination so registration is almost guaranteed if you get the formalities right. Registration can happen the same day an application is filed! A design registration does not depend on whether a design is used. Registered designs can even provide protection in the five years you’re gathering evidence of use for a trade mark registration.
UK, European and US designs have a 12-month grace period –an application can be filed within 12 months from first public disclosure. That provides time to show people the design and test the market. If you miss the grace period, a trade mark may still be available. You could also get one after your design registration has expired.
There are clearly times where it will be worth getting both design and trade mark registrations. Given the money that will have been spent on designing a product in the first place, paying for design and/or trade mark registrations is a no-brainer. It also doubles your rights enforceable against infringers.
