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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.