Registering logo as an industrial design. The pros and cons of such a strategy

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What to register? Company name, logo in different varieties or graphic sign?

Entrepreneurs with whom I cooperate often ask me the same questions:

1. Is it better to register a company name or logo?
2. How to register a logo if it occurs in several colours?
3. Do I also protect a graphic sign by registering logo of the company?

As a reminder, logo is a name dressed in graphic design. Such graphics may include stylized letters that form a logotype and a graphic sign.

I already wrote on the blog whether is it better to protect a company name or logo. Now I will answer the other two questions.

Entrepreneurs who commissioned the preparation of Book of Sign often receive from agency a logo in several colour options. A company logo will be presented differently on a white background and otherwise on black. There is also often created a vertical and horizontal variant.

When a client sends me several variants of a company logo, I suggest them to choose the one they will most often use. If they want to protect all varieties, they must take into account fulfillment of 4-5 separate applications.

Naturally, the registration fees will be then proportionately larger.

Registering logo of the company as an industrial design

Remember that trademark is protected as a whole.

The fact that someone will use a similar graphic sign to yours, next to a completely different word, most likely will not violate Your trademark. To ensure the strongest legal protection of the graphic sign, you should separately think about registering logo as a graphic trademark.

So, as you can see, the number of applications and protection fees are multiplied.

However, there is a way to find a golden mean in all this. Everything is based on registering logo of a company as an industrial design.

And to be more precise, this brand protection strategy is based on the fact that:

1. name and most used logo are registered as trademarks, and
2. other colour options of the company logo and graphic design are registered as Community designs.

Looking through the registers, I found many companies which do this.

As you can see below, the CADBURY brand is protected by a word and figurative EU trademark. However, at the same time 4 colour options of the company logo were registered using Community designs.

The owner of HEAD & SHOULDERS brand did that in the same way. After registering logo and a name as trademarks, the remaining colour options they secured with Community designs.

As regards the graphic sign protection in various configurations, the owner of WILD WOLF brand, handled with that very well. They registered a name, logo and graphics of a wolf as trademarks. In turn, as designs – different combinations of all these elements.

^{The rest of the article is below the contact form.}

Trademark and industrial design

As you can see, a company logo can be registered as a trademark and industrial design. However, these forms of protection are not equal.

On the other hand, I think that the only thing which matters for You as an entrepreneur is that after registering both trademark and graphic design, you can prohibit others from using similar trademark signs.

Trademarks

Names and company logos are most often registered as trademarks.

With the fact that a trademark can be any sign wich is suitable for distinguishing products or services on the market.

If you want to buy your favorite mineral water, trademark allows You to find it on a shop shelf.

However, sometimes the very shape of product is so original that it function as a trademark. In registers can be found many 3D trademarks:

What is very important, trademark protection is limited to the products and services indicated in the application according to the so-called Nice Classification. In other words, the legal monopoly on Your company name or logo is limited to the industry in which you operate.

If you have a FENIX restaurant, there will no be any problem for you with a bookstore with the same name. You will agree with me that a person who wants to eat dinner, will not buy a book by mistake 🙂

A competitor infringes the right to Your trademark only when a trademark sign they uses will mislead your clients. If Your trademark belongs to the category of strong trademarks, i.e. has a fanciful name, then even if competitor changes the logo – they will break the law.

Industrial designs

According to Article 3 of EUIPO’s the Design Regulation:

„design” means the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation.

As industrial designs are most often registered three-dimensional products:

In this form can also be protected two-dimensional products:

Furthermore,  EUIPO – the office registering Community designs, among the examples of designs clearly mentions logo.

When filling an application for registration of an industrial design, you have to rank it in a specific class, according to the Locarno Classification. And just under number 32 there is a class that clearly indicates logo as a form of industrial design.

Interestingly, in the case of Community designs, this classification is only for administrative purposes and does not restrict design protection, as is the case with trademarks and the Nice Classification.

In other words, a company logo registration as an industrial design gives You protection regardless the surface it is on.

An absurd situation may arise that, although graphic signs will be identical, in the light of trademark law – they will be considered as dissimilar trademark signs. This will happen if the compared trademarks are used to designate completely dissimilar products.

However, if the trademark proprietor has decided to register a company logo as an industrial design, then it may prohibit its use to anyone, regardless of the industry!

Requirements that have to be met in order to register a company logo as an industrial design

1) A company logo must fall within the definition of an industrial design.

EUIPO indicates in its guidelines that the words themselves and sequences of letters written with standard characters in white and black do not correspond to the definition of graphic design. So if you are interested in registering logo of a company as an industrial design, then its graphics must be fanciful.

It is good to add a graphic sign or at least colours.

On the other hand, if you look at what designs EUIPO has registered, you can come to the conclusion that little it takes to achieve this minimum fantasy:

2) A company logo cannot be contrary to public policy or morality.

These concepts are very vague and can be interpreted differently depending on the country, as well as an expert who will consider an application.

However, looking at the offices practice, it can be said that designs which encourage violation of the law or promote terrorism, will be contrary to public policy.

For example, a doll with the head of Osama Bin Laden was refused registration. A company logo declared as a design may violate morality if it will be vulgar or obscene.

3) A registered company logo must meet the novelty requirement.

After determining that a company logo falls within the definition of design, you have to answer the question whether it is new. The point is that before the filing date, an identical design cannot be made available to the public. The design will be considered identical to that already made available if it differs from it only in irrelevant details.

With the fact that there is such a thing as „relief in novelty”.

The point is that the disclosure of design 12 months before its application does not negate novelty, if the creator did it themselves.

This means that when registering logo of a company as an industrial design it should be of interest to those companies that are just entering the market with a new brand or have just made a strong rebranding. In both cases their logo will be considered new.

4) A company logo which is filed for registration must have an individual character.

Design is considered to have an individual character if the overall impression it produces on informed user, differs from the impression produced on them by design made available earlier.

I always simplify this by saying that:

A person who see your logo cannot have the déjà vu impression.

Thus, if you want to file for a company logo registration after a slight lifting, although it will meet the requirement of novelty, probably it will not have an individual character.

Importantly, after filing an application, the office will not examine if your design is new and has individual character. An expert will only check if the logo falls within the definition of design and whether it is not contrary to public policy or morality.

Formally, you will probably be able to file for a company logo registration that has been operating on the market for several years. However, you are exposed to the fact that in the event of dispute – a competitor will invalidate your right.

Registering logo of a company as an industrial design
pluses and minuses

Since you already know that a logo can be protected with an industrial design, now I want to make a pictorial compilation of all the advantages and disadvantages of such a brand protection strategy.

Pluses

-1-
The procedure of design registration is instant

Most of the companies I help decide to register Community designs.

An advantage is the pace of entire procedure.

Since filing an application to the day of registration usually passes 14 days. This is a rapid pace considering that you have to wait at least 4 months for EU trademarks registeration and at least six months for national ones.

This flows directly from point two, namely…

-2-
It is easier to register an industrial design than trademark

An expert quickly issue a registration decision because they only examine elementary formal requirements. Responsibility for a design to be new and has an individual character is shifted to applicant.

There is also no 3-month opposition period as for trademarks.

This leads to the fact that when registering logo of a company, which may have little chances of registration in trademark form, can easily be protected by an industrial design.

Example:

EUIPO refused to register the following trademark and considered it descriptive.

Therefore, an applicant after registering logo of a company as an industrial design, he succeeded.

In my opinion, if a given trademark sign is phonetically descriptive, Community designs may offer stronger protection than trademarks.

Note that in both cases only a graphic design will be the subject of protection. The fact is that a trademark is limited to certain products and services and Community design is not.

-3-
The registration of design is cheaper than of trademark

When applying for protection of EU trademark, you have to take into account official fees of typically around 1,000 EUR. On the other hand, fee of registering one Community design is 350 EUR.

It is also beneficial that …

-4-
In one application you can include more design variations

And the more there are, the unit fee for each design decreases. For example, if you applied for an EU trademark in 3 classes, you would pay for it 1,050 EUR. It is exactly the same fee to register as many as five Community designs.

I present in detail the amount of official fees in the following video:

-5-
By registering logo as Community designs, you secure 28 EU countries

If your business ambitions extend beyond Polish (or other country alternatively) borders, consider a company logo registration as an industrial design in EUIPO. Filing one application, you will protect all EU countries, including Poland.

Thus, formally you do not have to enter with your brand the markets in France or Spain, but preventively protect your rights there.

-6-
The protection of Community designs is not limited to products

Registering logo of a company as a Community design, you do not limit yourself to products indicated in an application. However, this applies only to designs protected throughout the Union. The limitation regarding classes occurs when registering an industrial design in the Polish Patent Office.

Pointing to class 32, in fact, you protect a design within each product on which it can appear.

And I used this advantage when advising my client.

She wanted to protect a logo placed on food products. The logo was to communicate clearly that products designated by it are of the highest quality. Initially, we considered to protect them in a trademark form. However, it showed up that we had 10 classes and an official fee exceeding 2,000 EUR.

Instead, we decided to register the logo as a Community design. Thanks to this, its graphics is relatively widely protected.

And all this for 6 times lower official fee.

We agreed that if her business develops well, in a few years we will strengthen our protection by also registering a trademark. The opposite could not be done, because as you know, such a design in the light of law would not be new anymore.

-7-
It is possible to postpone the publication of information about registered design

Filing for Community design registration, you can request a postponement of its publication for 30 months. As a result, formally you will have legal protection after registering logo of a company, while no one will be able to check to what design it applies.

This can be attractive for companies which do not want to reveal their business plans related to entering the market with a new brand. At present, watching what trademarks have been registered by, for example, game producers, you can legally check what they are currently working on.

-8-
There is no obligation to use an industrial design

Such an obligation exists in the case of trademark.

The law obliges you to make real use of trademark within 5 years of registration. Otherwise, your competitor may file an application to terminate its protection.

The point is not to block the market.

Such a requirement does not apply to industrial designs. So you can register your company logo and safely wait 10 years till you start using it.

-9-
Designs can be used for tax optimization

Entrepreneurs for tax optimization use trademarks, but increasingly also industrial designs. The advantage is the peace of registration as well as the certainty that protection will be granted. Later, the owner of rights to such a design may grant the company a license to use it or to provide a design contribution in kind to the company.

With a trademark, the entire proceedings can be extended up to several years if someone objects to registration.

-10-
The registration certificate can be used for marketing purposes

After passing the entire procedure, the Office will issue you with a certificate of registration:

This is an important document, because you will be listed there as the owner of rights. Then, you can place such a certificate on your website showing portfolio of your rights. It allows you to build an image of modern company.

In addition, clear information about what you protect allows you to deter offenders.

Registering logo of a company as an industrial design also has its drawbacks.

MINUSES

-1-
An industrial design protection can last max. up to 25 years

More precisely, it is divided into 5-year protection periods, which you can extend 4 times. After 25 years, the design registration right expires. There are no such restrictions with trademarks, where successively extended every 10 years, protection can last forever.

On the other hand, if we look at the most recognizable brands in the world, most of them rebrand after about 10 years. Today we have 2018. Few companies use the same logo as in 1993.

The overwhelming majority made a refresh.

Besides, after a few years company logo can always be registered as a trademark.

See also:

The oldest registered trademarks in the world ®

-2-
An industrial design does not protect a name but the appearance of company logo

Undoubtedly, a trademark registration will give Your brand stronger protection. Especially if you have registered it in a word form. Whether a competitor’s trademark sign is similar to such a trademark is assessed:

• graphically;
• phonetically, and
• semantically.

It may turn out that trademarks are not similar graphically, but finally in the radio advertisement they are pronounced the same. Therefore, there is a law violation because a potential consumer may be wrong.

In the case of designs, the similarity is assessed only graphically.

-3-
Your company logo cannot be on the market for more than 12 months

The novelty requirement does not apply when registering a trademark.

In fact, you can operate under a given logo for up to 10 years and suddenly decide to register it. If you also want to protect it in the form of an industrial design, you can do it, but the protection itself will be quite illusory.

It will be easy to invalidate such right.

-4-
An industrial design registration does not entitle You to use the ® symbol

The characteristic R in a circle enjoys good reputation among consumers.

Most people perceive it as information that a product designated with it, is original or of high quality. This is just a myth because the regulations clearly indicate that this symbol can be used by an entrepreneur who register their trademark.

The symbol ® is an abbreviation of the word „registered”.

Unfortunately, there is no analogical symbol that can be used to designate industrial designs. What is more, if you do not protect your trademark and place symbol ® on it, you are breaking the law, which  carries a fine.

Registering logo. Summary

You should base the legal protection strategy of brand on the trademark registration.

This is by far the best and strongest form of protection. Registering logo of a company as an industrial design can in turn be used to strengthen it. Here, registration fees are lower and in some cases industrial designs give you the opportunity to intervene where trademark protection is not valid.

In addition, remember that most disputes are not brought to court but ends with a settlement. Ideally, you could show your competitor the whole portfolio of registration rights you are entitled to. Note that if you protect a company brand in the form of:

• word and figurative trademark, and
• Community designs in 5 colour options,

you have 7 registration certificates.

In this case, the opponent will have to either agree with you or attempt to annul the 7 protective law. It is very expensive, so they will be more willing to settlement discussions.

As you can see, registering logo of a company as an industrial design has its advantages, although it is not free of drawbacks.

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