IP Insights: Application strategies for trademarks and designs

Show notes

Download our IP brochures on design protection in Europe and trademark protection in Europe.

We will address some issues regarding the complex relationship between trademarks and designs.

We have seen a lot of cases in the past, and also recently, of conflicts between trademarks and designs involving icons such as the STABILO pencil, or the VESPA scooter, or the RUBIK’s cube.

Absolutely. It’s not only conflicts but about overlap and even overreach! I think, this comparison is fascinating because it’s not about conflicts only but about coexistence.

There are remarkable similarities between brand and design protection in Europe. Both may cover the same subject matter – the shape of a product, for example – and, once registered, both provide for EU-wide protection.

Also, when it comes to customs, both can be enforced if handled properly. As regards procedural aspects, both have the same remedy and jurisdiction. But there is one big difference between trademark and design protection.

Yes, trademarks are checked for absolute grounds while, in Europe, designs are not examined on the merits. So, you should be less sure about the scope and strength of your design right in comparison with a trademark having passed the strict office examination.

That’s true. However, with trademark owners, challenges arise post-registration: You must monitor your market and competitors and start using your mark. The scope and strength of your trademark are flexible, depending on your own efforts, whereas with designs – like patents – this is static post-registration.

In other words: While you should invest some time and money when creating a design in order to make sure it’s new and has individual character over any other prior design at the time of filing, you have to invest after filing a mark – enforcing, monitoring, advertising.

What does a perfect plan look like? Filing both IP rights simultaneously? Or would the filing of one IP right adversely affect the other one? Would it be better to wait with your trademark filing in order not to jeopardize your design filing?

I would start by filing the mark if I had to choose. There is a 12-month grace period under European design law, allowing clients to test the market. So, filing a mark during that period would not compromise the design.

That’s true, and also, there is no novelty test and no prior use defence. This means, if a third party registers your right, then that party would have the benefit of the earlier right and that must be avoided.

Thank you for your attention – we appreciate you stopping by. Should you wish to learn more, please visit our website and download our IP brochure.