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.
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
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.
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.
No matter what you decide, it is vital that you speak to an attorney to discuss your options.