Trade Marks or Designs - so many choices!

We all know that names and logos can be protected as trade marks and the shape and appearance of new products can be protected as designs.  But is it that simple? 

Whilst the traditional ways of protecting logos as trade marks, and shapes as designs, are likely to remain the safest and best forms of protection, there are a range of scenarios in which is worth thinking a little more widely.  Many logos, shapes and patterns can be registered both as trade marks and designs. 

A registered design is a traditional form of protection for new clothing, jewellery or handbag designs, as well as for patterns and surface decoration.  It is perhaps less well appreciated that the appearance of new graphic symbols and logos can also be protected as registered designs.

One reason why you might want to consider protecting a logo or a motif as a registered design is to provide cost effective protection over a wide range of products. 

The cost of registering a trade mark depends on the number of categories of goods in which the mark is registered. Clothing, bags, fragrances, eyewear and jewellery are all in different trade mark classes and it can get quite expensive to register a trade mark for all of these categories. 

To sue someone for infringing a trade mark, the infringer will generally need to be using a similar mark for goods which are closely related to the goods for which the mark is registered.  For example, a company that has registered a logo as a trade mark for clothing will have a good chance of stopping someone else from using a similar logo for bags, because it is recognised that bags are often purchased and worn with clothing, and that both contribute to personal appearance.  But perfumes on the other hand, are generally not recognised by the courts as being related to clothing, in spite of the fact that many clothing designers brand fragrances.

The owner of a trade mark for clothing may not be able to sue someone for using the same trade mark on fragrances, or may find it difficult to do so, unless they can prove that unfair advantage is being taken of their reputation.   

In contrast to the position with trade marks, a registered design for a logo is not limited to a specific category of products and will generally be infringed by anyone who uses the same logo, regardless of the product they use it on.

There are limitations to the protection that you can get for a logo by registering it as a design.  Importantly, registered designs are only infringed by use of the same design, or a design that does not produce on the informed user “a different overall impression”. This can be quite a narrow definition.  In contrast, the usual test for trade mark infringement is whether there is “confusing similarity” between the registered trade mark and the infringement.

It is also crucial to note that you can only validly register a design when it is new (or less than a year old) and provided it is sufficiently different to anything anyone else has come up with.  Registered designs also have a finite life of 25 years – although this is easily sufficient for the commercial life of most fashion designs.

The list of what can be registered as a trade mark is also longer than you might think.  In addition to words and logos, more exotic things like colours, shapes, smells and sounds can also be registered as trade marks, if they are capable of indicating a particular trade origin.  Colours are often registered in particular combinations, for example Gucci has registered bands of the colours red and green.  Shapes that are regularly registered as trade marks include distinctive bottle shapes or packaging, for example perfume bottle shapes.   

One advantage of trade mark registrations is they can last forever, subject to payment of renewal fees. However, you do have to use a registered trade mark in order to maintain the validity of the registration.

Many major designers regularly consider both trade mark and registered design protection for the same logos, shapes and patterns.  For example, Burberry has registered its famous checks both as a trade mark and a design.  Chanel has done the same with a lion head device.  Gucci has many registered designs for wristwatches, as well as a registered trade mark for green and red bands applied to a watch face. 

If you have a new shape, or a logo, or a pattern which you think will be important, then as well as going down the traditional routes of registered design and trade mark protection, it is also worth thinking a little more broadly.    

Alison Hague, Partner
First published in Fashion Capital, April 2014