Using design rights to protect logos
21 September 2016, Netherlands
Registered trade marks are often considered to be the only way to protect logos, but many companies are now using design rights together with trade marks (and, in some cases, instead of them) to protect their logos. Design rights are therefore not only a valuable means of protecting the designs of a company’s product range; they are also increasingly being used for brand protection purposes. This article gives an insight into the benefits of EU design rights and the differences between trade marks and design rights.
Registering a logo as a design right can have many advantages.
Firstly, a Registered Community Design (RCD), which is enforceable throughout the EU, can be obtained in a matter of hours because there is no substantive examination of the application by the EUIPO. This is greatly different from the registration of an EU trademark, which will take at the very least three-and-a-half to four months to obtain.
Secondly, because an RCD can be obtained almost immediately and an unregistered Community design right arises automatically, design rights may also be a good tool to provide immediate protection to a new logo/brand whilst it acquires the distinctiveness on the market which is necessary for trade mark registration.
Thirdly, obtaining RCD protection is relatively inexpensive and filing costs can be reduced further by filing a number of designs as part of a multiple application. A logo could, for instance, be filed simultaneously in all the colours of the rainbow.
Finally, once granted, there is no obligation to use the RCD – unlike trade marks it cannot be revoked on the basis of non-use.
While there is a presumption of validity, in order to validly invoke a design right the design must be new and have individual character over pre-existing designs. This means that an old logo cannot become a valid RCD, unless only the designer himself/herself disclosed it during the 12 month grace period preceding the RCD filing date.
The requirement of individual character relates to the figure of the design only; the meaning of the words will not be taken into account. This means, for instance, that any logos comprising only words (or a word) written in a common font without any figurative elements are unlikely to be accepted as a valid design right.
An RCD that has been filed in the specific Locarno class 32 (logos) is not limited to any particular type of goods. It can therefore be enforced against any other design creating the same overall impression on the informed user regardless of the type of product. It may therefore be easier to take action against dissimilar types of goods on the basis of an RCD rather than a trade mark, because trade marks are registered only in respect of specified classes of goods or services.
On the other hand, the notional “informed user” that is said to assess the overall impression of design rights is generally held to be better informed and more attentive than the notional “average consumer” who is said to decide on trade mark infringements. Hence he may be more likely to spot differences between designs, which may lead to a finding of non-infringement.
Term of protection
Another point of difference from trade marks is that the maximum term of protection of an RCD is 25 years, as opposed to a potentially infinite term of protection for trade marks (subject to use and renewals).
Design rights can both complement and improve upon the protection of logos provided by trade marks. A well thought-through filing strategy should consider both types of rights in order to achieve the best possible protection for the brand.
Originally published in DesignWrites 9th Edition. Co-authored by Nina Dorenbosch.