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.

What is a trade mark?

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 one or several words, including personal names or a logo, or a combination of a logo and word(s), but can also be, for example, a shape of goods, a sound, a hologram or a motion. In theory a distinctive smell could be a trade mark; in practice they are exceedingly difficult to register.

What is a registered design?

It is a registered right which protects the aesthetic appearance 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.

What can be a trade mark but not a registered design?

Clearly smells, sounds and motions 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.

What can be a registered design but not a trade mark?

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 registered as a trade mark.

What kind of marks could be protected by Registered Community Design (RCD)?

Logos, shape marks, packaging and containers, and distinctive features or decoration are examples of marks that might be protected by an RCD instead of or in addition to 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, or it could simple not be found to possess the necessary degree of distinctiveness. For “marks” such as these an RCD may be a preferable option.

What are the advantages of an RCD?

There are several advantages. They include:

• no limit on the range of products protected - although a particular product needs to be specified on the form by way of example it is not limiting. For a European Union trade mark (EUTM) the basic fees cover up to three classes of goods/services; to cover a wide range of goods the extra fees can be substantial;
• an RCD can cover an unlimited number of designs, provided that the example products belong to the same Locarno Class, though this does not apply if the design is for surface ornamentation. In comparison EUTM is restricted to one mark;
• details of an EUTM application are available to the public within a few days of submitting the application. For an RCD it is possible to request deferment for up to thirty months from application (or the priority date if priority is claimed). This can be useful in certain industries so that competitors do not become aware of designs before they are launched;
• the validity of the RCD is not dependent upon the design being used: an EUTM can become vulnerable to attack if use is discontinued for some time.

What are the disadvantages of an RCD?

• The design has to be new (or almost new - within one year of first being made public) for a valid application for an RCD to be made.
• RCDs cover physical products: although there may be tangible items associated with the offering of services (e.g. brochures), it may be difficult to use an RCD to protect services.
• RCDs have a duration of up to twenty-five years, subject to the payment of renewal fees: in theory trade marks have unlimited duration. In practise twenty-five years may be more than enough length of protection, and if need be at the end of that time it may then be possible to obtain trade mark protection, as by that time the mark may well have gained distinctiveness through use.

What about United Kingdom registered designs?

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.

Summary of major differences

This information is simplified and must not be taken as a definitive statement of the law or practice.