TRADE MARK OR DESIGN?
The ability to obtain European Union (EU) wide protection for designs, the broad definition of a design in the EU legislation and the fact that protection is not limited to a given type of product, gives the possibility of gaining substantial protection in the EU for certain types of marks other than by registering them as trade marks. (The European Union trade mark was previously known as a Community Trade Mark (CTM).)
A trade mark is something which enables customers to identify goods or services as coming from a particular source, even if the precise identity of the source is not known. Usually trade marks are a word or a logo, or a combination of the two, but can also be, for example, a shape, a sound or a gesture. In theory a smell could be a trade mark; in practice they are exceedingly difficult to register.
It is a registered right which protects the design of the whole or part of a product and may arise from the lines, contours, colours, shape, texture, material or ornamentation of the product. The product may even be a graphical symbol.
Clearly smells, sounds and gestures cannot be designs, and it would be stretching the definition of a registered design to cover words – though if the typography of a word mark was new then this could be covered by a registered design.
If the shape, pattern etc. of the item is dictated by its function, and it is that which gives value to the item, then it cannot be a trade mark.
Logos, shape marks, packaging and containers, and distinctive features or decoration are examples of marks that might be protected by an RCD instead of a trade mark. Examples could be a cheese in a special shape, a perfume bottle or distinctive stitching on clothing. Indeed with some “marks” such as shape marks, it may be difficult to obtain trade mark protection, as the shape may have functionality, e.g. the shape of an electrical appliance, or else be that which adds substantial value to the goods, e.g. an elaborate perfume bottle. For “marks” such as these an RCD may be a preferable option.
There are several advantages. They include:
The criteria for United Kingdom Registered Designs (UKRDs) are similar to those for RCDs.
However, publication of UKRDs can only be deferred by up to 12 months. Also, unless there is no interest beyond the United Kingdom, an RCD is a more economic option as all of the EU can be covered for less than three times the cost of a UKRD.
EUROPEAN UNION
TRADE MARK
|
COMMUNITY REGISTERED DESIGN
|
|
Plain word mark |
YES
|
NO
|
Stylised word mark |
YES
|
NOT RECOMMENDED
|
Logo (with or without words) |
YES
|
YES
|
Pattern |
YES*
|
YES
|
Shape |
YES*
|
YES
|
Colour in itself, sounds, gestures |
YES*
|
NO
|
*Especially with such marks one may need to demonstrate that they have become distinctive in order to obtain registration | ||
Mark needs to be new or almost new |
NO
|
YES
|
Multiple items |
NO
|
YES
|
Deferment of publication |
NO
|
YES
|
Protection of services |
YES
|
NO
|
Use to maintain validity? |
YES
|
NO
|
Duration |
UNLIMITED
|
25 YEARS MAXIMUM
|
This information is simplified and must not be taken as a definitive statement of the law or practice.