Trade Marks vs Registered Designs – How to choose the right protection?
Trade Mark vs Registered Design? It can be confusing trying to decide what protection you should file for. We have summed up the benefits of both to help you choose.
Trade Marks
A Trade Mark is a recognisable symbol, logo, phrase, or word that distinguishes a specific product. It legally differentiates a product and its goods or services from others in the same industry and endorses the company’s ownership of the brand.
Obtaining registration of your Trade Mark stops third parties from using an identical or confusingly similar mark for identical or confusingly similar goods and services.
Listen to our Trade Marks podcast episodes to learn more: Let’s Talk Pure Ideas Podcast
Registered Designs
A Registered Design is the protection of the appearance of the whole or part of a product.
It provides you with the legal right to produce, use, sell, import and export their product in this design. A Registered Design prevents anyone from copying the external design within the geographical jurisdiction it is protected.
Features of a Registered Design:
- Lines, contours and shapes of the product
- Colours & patterns
- Texture & Packaging
- The ‘get-up’ of the product
- Graphic logo or symbols
- Typographic typefaces
- Whole or part of a product
How to Choose the Right Protection
Do you need to choose one or the other or can you have both?
This really depends on the mark and product in question.
Applying for Trade Mark registration grants protection to the mark representing or symbolising your business. It lasts for a period of 10 years. It can be renewed indefinitely. That is providing the Trade Mark is in use.
Applying for a Registered Design grants protection to the aesthetic design of the product. Meaning the appearance of the whole or part of a product.
This includes:
- Features
- Lines
- Contours
- Colours
- Shape
- Texture
- Material
Protection lasts for a maximum period of 25 years if renewal is maintained every 5 years.
The design must be ‘new’ meaning it must be different to any previous designs. And the timing of your application is very important. You are only allowed up to one year from the date your design was first made public before you must apply for registration.
Smells, sounds and motions cannot be Designs but may be unconventional Trade Marks. However, a Registered Design may cover a new ‘typographic typeface’.
In what instances can you or should you have both?
You may wish to file protection for your product, both for the name of the product and the visual design element.
If you had a unique and distinctive new perfume, you could file to protect the name of the product and file a Registered Design to protect the bottle’s shape, decoration and appearance. You may even be able to secure Trade Mark protection for the shape of the perfume bottle.
Coca-Cola, for example, has protection for the word mark ‘Coca Cola’. As well as a three-dimensional Trade Mark and Registered Design for the shape of the bottle.
If you cannot obtain Trade Mark protection, can you consider design protection?
If your Trade Mark is deemed non-distinctive or descriptive of the goods and services applied for, you can file for a Registered Design.
For example, with a shape mark, it may be difficult to obtain Trade Mark protection. This is if, for example, the shape is deemed to have functionality, such as an electric toothbrush. For marks such as these, a Registered Design may be a preferable option.
| Registered Design | Trade Mark |
|---|---|
| A broader range of products can be protected. | Identifies a specific list of goods and services to protect. |
| Can cover an unlimited number of designs in one application for a saving. | You can only apply to protect one individual Trade Mark at a time. |
| The novelty of the design must be ‘new’ (1 year). | Marks do not have to be new, but cannot be identical or similar to an existing mark for identical or similar goods and services. |
| Protected for 5 years and up to 25 years in total. | Unlimited protection. Subject to renewals every 10 years. |
| The validity of a Registered Design is not dependent on the design being used. | A Trade Mark can become vulnerable to attack if the use is discontinued for some time. |
| Publication of UK Registered Designs can be deferred up to 12 months and a Registered Community Design can be deferred up to 30 months. This protects your design from competitors until you are ready to launch your product. | Following the filing of an EU or UK Trade Mark, the mark is examined by the Office of origin. Depending on acceptance, it will proceed to publication.
A mark is published for opposition purposes for 3 months in the EU and 2 months in the UK (extendable up to 3 months). |
