Multi - protection – Design and Trademark
Let us explain a little about when an industrial design can be also protected by or as a trademark. In other words, is it possible to have a dual design and trademark protection? You will recall that a trademark is a distinctive sign that serves to differentiate the products of one business from those of others. If the form, design or packaging of a given product is or becomes a distinctive feature of the product in question, then in some countries it may be protectable as a three‐dimensional trademark or as trade dress under the trademark law.
The unique shape of a bottle of Coca‐Cola and the peculiar triangular shape of the Toblerone chocolate bar are examples of three‐dimensional marks or trade dress. The shape of the bottle of Coca‐Cola was initially an industrial design and only later it was registered as a trademark in many countries. Rarely would a product be protected by a design right and by a trademark registration on the day of its launch or early on in its life cycle. Once a design acquires distinctiveness through its use in the market over a period of time, it may qualify for being registered as a mark. So, only at that stage an application for its registration as a mark should be filed. As design registration is for a maximum of 10 to 25 years, depending on the country, and trademark registration may be renewed forever, therefore, after some time the design registration will lapse and only trademark registration may be continued indefinitely.
Therefore, many IP savvy companies take steps to use a particularly well‐ accepted new or original design in the trademark sense in their branding and marketing strategy to facilitate its eventual registration as a mark. So, one more reason for registering a new or original design as an industrial design is to protect it to the extent possible while it is in the process of acquiring distinctiveness through use, which is required for its eventual registration as a mark.
While an industrial design and a trademark are two distinct types of intellectual property, each is capable of providing significant commercial advantages to its owner. Both types of rights may be available simultaneously for a given shape if it meets the legal requirements for protection under the respective laws. It is interesting to note that, in many countries, computer or desktop icons may be protected simultaneously as industrial designs and as trademarks. For example, Sun Microsystems has registered the coffee‐cup symbol for its Java product as a trademark, and also has a design registration for the coffee cup combined with the words “Java Workshop.” This is done to take advantage of the stronger protection afforded by design registration, in addition to the weaker but longer term protection possible through its trademark registration.
For further information, please follow the next contents, explore the world of intellectual property and chances that intellectual property may bring to your enterprise.
