Registering logos as designs to enhance protection
Rights holders are increasingly using design registrations to protect their logos, especially since the most recent Locarno Classification confirmed this practice. But what benefits can this offer brand owners and what pitfalls must they avoid?
Design registration has long been used to strengthen the protection of brands, especially for shape marks that apply to products or packaging. More recently, legal options for protecting logos (which include device marks with no wording) through design registration have become increasingly popular. This article explains how to register logos as designs and what advantages this can offer brand owners.
Legal basis for scepticism
Although an increasing number of logos have been registered in the EU Community Design Register over the last few years, some scepticism remains as to the validity and benefit of registering logos as designs. Until 2009, logos were registered as designs under the qualification ‘graphical symbol’ in the residual Class 99 of the Locarno Classification. In 2009 the practice of registering logos in the Community Design Register was more or less confirmed with the implementation of the ninth edition of the Locarno Classification, in which the old residual Class 99 was replaced by a new Class 32 in which logos were included as a product indication in the class heading, alongside graphical symbols, surface patterns and decorations.
Twenty-one EU member states were involved in creating the ninth edition of the Locarno Agreement, which identifies logos as ‘products’, meaning that one may assume that a logo can be protected as a design.
Scope of protection for designs
The scope of protection conferred by design registration includes every design that “upon the informed user does not convey a different overall impression” (Article 10 of the Community Design Regulation).
From the European Court of Justice (ECJ) decisions in Arsenal (C-206/01, November 12 2002) and Opel/Autec (C-48/05, January 25 2007) – as well as in a number of other decisions, including L’Oréal (C-324/09, July 12 2011); Google France (Joined Cases C-236/08, 237/08 and 238/08, March 23 2010); Portakabin (Case C-558/08, July 8 2010), BergSpechte (C-278/08, March 25 2010); and Interflora (C-323/09, September 22 2011) – we have learned that a rights holder can object to the use of an identical sign for identical goods only if the infringing use is “detrimental to the functions of a trademark and especially the function that is considered as most essential, namely to guarantee consumers the origin of the goods”. A somewhat weakened likelihood of confusion has thus been introduced via the backdoor in the enforcement of Article 5(1)(a) of the EU Trademark Directive (89/104/EEC). This ‘function’ doctrine makes it easier to object to the use of an identical logo for identical goods or services on the basis of a design registration compared to a trademark registration.
Figure 1: Prior Community Trademark Registration 1312651
Figure 2: Younger Community Design Registration 426895-0002
However, the owner of a design registration for a logo can object to the unauthorised use of a sign that differs from its own logo only if the two do not convey “a different overall impression on the informed user”. This criterion seems to be more limited than that of similarity, which is used in trademark infringement matters. The ECJ decision in José Manuel Baena Grupo SA v Ohim, (Case T-513/09, October 18 2012, in combined Cases C 101/11 P & C 102/11 P) revolved around a cancellation action based on a prior Community trademark registration (Figure 1) against a younger Community design registration (Figure 2) for a cartoon used to decorate t-shirts, caps (with sun visor), stickers and printed matter, including advertising materials, in Locarno Class 99-00.
The most relevant question in this case was whether the two signs conveyed the same overall impression on an informed user. The decision thus provides an insight into the criterion that defines the scope of protection of logos that have been registered as designs.
The ECJ held that the differences between the two cartoons were sufficient to convey a different overall impression on an informed user, despite similarities of other parts and the high degree of freedom of the designer. The ECJ declared that the overall impression was largely dominated by the different facial expressions and positions of the bodies. In this decision a very limited scope of protection was thus given to the design registration of a logo, especially in comparison to the protection provided by trademark rights against similar marks.
Scope of protection for goods and services
A procedurally similar case with a very different outcome was Hee Jung Kim v Zellweger Analytics Limited (Invalidation Division Case ICD 1477, Logo Midas, March 1 2006 and Board of Appeal Case R 609/2006-3, May 3 2007). In this case the holder of a younger Community design registration of the logo “MIDAS – Everything we touch is safer” (162425-0004) in Locarno Class 32 requested the cancellation of the word trademark MIDAS (IR810732).
Figure 3: Prior International Trademark Registration 810732
Figure 4: Cancelled Community Design Registration 162425-0004 – Locarno Class 32: logo
The cancellation action was based on Article 25(1)(a) of the Community Design Regulation. However, it still teaches us something about the scope of protection for design registrations of logos in Locarno Class 32.
The prior international trademark registration MIDAS covered a broad scope of goods in Nice Classes 7, 9 and 11 – primarily household products. The Board of Appeal decided that a logo registered in the Community Design Register in Locarno Class 32 should be deemed to cover an unlimited range of products and services, including in this specific case the products for which the MIDAS trademark had previously been registered as a design right, which covered the logo as a product to be used on products or in connection with services, on packaging, stationary or even on buildings (Invalidation Division Case ICD 1477, Logo Midas, March 1 2006 and Board of Appeal Case R 609/2006-3 van May 3 2007, par 27).
This decision confirms that the scope of protection afforded by registering a logo as a design in Locarno Class 32 is not limited to specific products or services, and the owner of such a registration can act against the use of a sign that does not convey a different overall impression, regardless of the goods or services for which that sign is being used.
The single class exception for filing a multiple design application does not apply to Class 32 products. The owner of the Community design registration for “MIDAS – Everything we touch is safer” could have chosen to include the logo in a Community design application for the gas safety products on which the logo was intended to be used. In that case the result of the cancellation action might have been different, although it would have made no difference to the scope of protection. Also taking into account the fact that the Community Design Regulation does not include a specialty principle, the scope of protection of a logo that is registered as a design should cover use for all conceivable products and services, without having to prove reputation and detriment or unfair advantage.
Requirements for design protection
In order to qualify for design registration and protection, a logo must meet the requirements set out in the Community Design Regulation (ie, it must be new and possess individual character). With regard to novelty, there is a 12-month grace period after the logo has been made public during which the design application may be filed. Due to the novelty requirement, design protection is not available for logos after they have been public for 12 months. However, most newly designed or extensively restyled logos will meet the novelty requirement, especially as when it comes to assessing the novelty of a design, the emphasis lies in the details.
However, the novelty requirement can also make logos vulnerable. If a Community design registration is cancelled – for instance, on the basis of a prior right in one of the 28 EU member states – there is no option to convert or refile the logo as a national design application, due to the lack of novelty. It is always possible to refile the logo as a trademark, provided that it meets the requirements for trademark protection.
It is highly relevant in this regard that the Office for Harmonisation in the Internal Market (OHIM) does not examine whether design applications meet the requirements of novelty and individual character. Except for ex officio examination to ensure that the design is not against public order or morality, OHIM examines only whether the applied-for design meets the definition of a ‘design’: “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” (Article 3 of the Community Design Regulation).
Figure 5: Some examples of logos which have been registered as designs
According to OHIM guidelines, a design consisting only of a word or words per se, in a standard typeface, in black and white and without any other stylisation will be refused registration as a design, as it will not be regarded as the appearance of a product. That OHIM does not apply its own guidelines strictly is shown by the examples of logos in Figure 5, which contain little stylisation but have nonetheless been registered as designs in Locarno Class 32. The word elements in these logos may be distinctive for the products on which they will be used. However, this is completely irrelevant if a logo is registered as a design.
Presumption of validity
It is highly questionable whether the owners of these design registrations would actually obtain design protection. Ultimately, this would be up to the courts to decide. However, despite the fact that there is no real examination of design applications, the Community Design Regulation provides a presumption of validity for all registered designs. It mentions that in case of proceedings in respect of an action for (threatened) infringement of a registered Community design, the Community design court shall treat the Community design as valid (Article 85). Validity may be challenged only through a counterclaim for a declaration of invalidity; otherwise, no plea relating to the invalidity of a Community design shall be admissible. While this gives a certain advantage to owners of a design registration for a logo, as shown above, this can be an unwelcome effect.
Administration of design registration
Design registration of logos at OHIM affords certain administrative and other (dis)advantages in comparison to trademark registrations.
Multiple design applications
An EU design registration is very cost effective, even in comparison to a Community trademark registration. In addition, several logos can be combined in a single application. For all other designs the single class rule applies, which means that all products within one multiple design application must belong to the same Locarno class. An exception to this rule has been made for logos, which can also be included in a multiple design applications for products or packaging on which the logo shall be applied.
The registration proceedings for a Community trademark take at least five months, three of which constitute the opposition period. A Community design is usually registered on the same day that the application is filed, as there is no examination on absolute grounds or publication for opposition purposes.
Deferment of publication
As an additional advantage in registration proceedings, Article 50 of the Community Design Regulation provides an option to defer publication of the design by up to 30 months from the application date. This gives the applicant priority without having to publish the new logo or variants thereof. Upon payment of additional official fees, deferment can be requested for all or some of the logos included in the application. If the applicant chooses to request deferment of publication, it can send a warning letter to an alleged infringer while the addressee cannot assess the full base of the claim. To start a court case, the logos must be made available to the defendant and during deferment the rights holder can act only against the direct copying of the registered design, and not against use of a design that results from an independent work of creation by a designer who may be reasonably believed to be unfamiliar with the design in question (Article 19 of the Community Design Regulation).
Actual use is not required in order to maintain the right to a registered Community design. This can be a useful advantage, especially since the bar for genuine use of a CTM was raised following the ECJ’s ruling in ONEL (Leno Merken (C-149/11,December 19 2012), aka ONEL/OMEL).
Further, OHIM provides a highly efficient and cost-effective administrative procedure for cancellation of a Community trademark registration based on lack of genuine use, which involves a reversed burden of proof. Even when brands are being used, it can be quite a challenge to have to prove genuine use over and over again.
The maximum lifespan of a Community design registration is 25 years, which is more than sufficient for most designs. OHIM statistics show that fewer than half of all Community design registrations are renewed after five years. This might be different for logos that are registered as designs, as logos tend to have a longer life expectancy. However, there is increasing pressure for brands to restyle themselves every five to 10 years in order to keep the public interested. The limited lifespan of a design registration matches the type of protection that is obtained through design registration. In addition, the owner of a logo can always opt to register it as a trademark.
The scope of protection afforded by registering a logo as a design in Locarno Class 32 is not limited to specific products
The Community Design Regulation also provides for the protection of unregistered designs (Article 1(2)(a)), although this is available only for the first three years, calculated from the date of first publication of the design within the European Union (Article 11). An unregistered design right provides protection only against direct copying (Article 19). During the first three years following the introduction of a new or stylised logo, its owner can object to the use of any sign that conveys the same general impression for non-similar goods or services based on its unregistered design rights. After three years, objections against use for non-similar goods (without registration) can be made only on the basis of copyright. However, in many countries, the threshold for granting copyright is much higher than that for obtaining (unregistered) design rights and copyright in Europe is not harmonised in the way that design rights are.
The number of years a Community design registration is valid
Since the introduction of the ninth edition of the Locarno Agreement, it should now be assumed that registration of logos in the Community Design Register is now a codified legal practice. This means that both trademark protection and design protection are available for logos.
Design registration can be used effectively as part of a strategy to protect a new brand. Cost-efficient protection can be obtained by filing a multiple design application – especially if the logo comes in several variants or colours – including not only the logo and possibly variants, but also other brand elements such as packaging, get-up and parts or elements thereof. In this regard the new line set out by OHIM and national EU trademark offices in the Convergence Programm on the Common Practice of the Scope of Protection of Black and White Marks is highly relevant.
Also, where a logo is to be used for merchandising and the list of possible goods and services to which it will apply is not yet clear, registering it as a design will provide protection against counterfeits on any and all conceivable products or services.
Design registration cannot replace trademark registration, but combining the two can certainly enhance the rights holder’s position. A rights holder can object to the use of a similar mark for similar goods on the basis of its trademark rights, provided that a likelihood of confusion exists. At the same time, the rights holder can take action against the use of any sign that produces the same overall impression for similar and non-similar goods based on its design rights, without the need to prove confusion, reputation, unfair advantage or detriment to its trademark or to a trademark function.
Design rights can coexist usefully with trademark rights with regard to the protection of logos. Each provides its own form of protection to the underlying intellectual property, with its own advantages and disadvantages. Design registration can therefore be considered a welcome addition to the range or protection available for logos.