Traditional marks in a design world

Designs are becoming more crucial to manufacturers of consumer goods – distinctive design can not only result in aesthetically pleasing products, but also help to indicate the products’ origin. But could or should designs ever replace trademarks?

In recent years designs have become increasingly important in our busy world and are now more highly valued than ever, in every sense of the word. While this is good news for designers and means that, as consumers, we live in a world of aesthetically pleasing yet functional goods, from a business perspective the key to long-term success is the ability to harness the value of a popular design and translate it into revenue. This is where trademarks take centre stage.

It is difficult to predict which designs will capture the public imagination, but it is always clear when one has – not least because of the plethora of copycat and derivative designs that flood the market. Various legal mechanisms exist to protect product designs, including regimes of both registered and unregistered design rights, as well as three-dimensional (3D) trademark registrations. However, here we explore how savvy and forward-looking use of traditional trademarks can help parties to capitalise on a popular design for years to come, even after production ceases. We then turn to consider what happens when the design of a popular product assumes the role of an indicator of origin and how, even then, traditional trademarks should not be neglected.

New ideas

While imitation is the sincerest form of flattery, no one wants to see others profiting from their hard work. For companies with design-based product ideas, there is thus often a burning desire to protect the idea or concept behind a particular product, especially where this is a new type of product. The bad news is, of course, that ideas per se cannot be protected.

Registered and unregistered design rights, and 3D trademarks are all tools that can protect aspects of new products and can thus be useful in the fight against copycat or derivative designs. However, for those products that meet the registration criteria, 3D trademark protection can be time consuming and expensive to obtain and enforce, while the outcomes of design infringement cases are often unpredictable. Design protection is also temporally limited. Companies can thus find themselves at a loss as regards the best way of ensuring that they are in a strong position should they get lucky and find that their idea is a hit with consumers. This can be a problem for new and unknown companies that do not have an established brand, especially if they have limited resources to dedicate to IP protection.

Brand names and logos

The starting point for these entities should be traditional trademarks, in the form of brand names and logos. It is generally a fairly straightforward endeavour to register distinctive words and logos. The scope of protection afforded by such registrations is usually fairly clear and with proper care and maintenance they can potentially last forever. The normal caveats apply: the marks should be distinctive in relation to the goods of interest and prior rights checks should be carried out in advance of settling on a brand. Even so, there may still be some bumps along the path to registration.

If resources permit, any elements of the product in question that can be protected under applicable IP laws should also be protected. In a choice between deciding to protect the brand name and/or logo and protecting one of these design elements, the former is generally the better investment in the long run. But how does having a trademark registration for a brand name help a party when its product takes off and others start to copy the design?

The answer is that it does not per se. However, a properly used and maintained trademark registration coupled with a considered marketing and advertising strategy – in which both the brand name and design elements work together – should help to reduce the commercial impact of copying. Even before copying becomes an issue and even where it may be possible to obtain some of the additional rights discussed above, parties that see the value in their product being closely link to their designs would be well advised to undertake steps to create a link between the design and their brand name in the minds of consumers, regardless of whether the brand is new or already well known.

The underlying aim in this regard should be to utilise the design to build or enhance the brand, which can in turn be used to promote further products in the future, even when the original product or design is no more. Clear use of the brand name in promoting the product is essential in this regard, both in relation to the original product and in future endeavours. The initial popular design can also be drawn upon in future products, and adopting consistent design features across product ranges and product lines helps such features to become part of the brand identity and feel – even where they are not necessarily capable of separate protection. If these elements are linked in the minds of consumers with a particular company, the commercial effects of any copying that does occur should be diminished.

There will always be a tension between aesthetic design features and the inclusion of trademarks on certain products

Originality

Unfortunately for some, it is almost inevitable that a popular design will be copied or at least serve as ‘inspiration’ for others. The aim for the party that created the original design is to minimise any diversion of trade to these later products. On one level, this means keeping in touch with consumer needs and demands, and staying competitive in terms of quality and value. Even if the legal system provided a quick, cheap and easy way of preventing others from copying an idea, the commercial reality is that in order to profit from a product over time, that product must continue to appeal to consumers. However, the advantage that the first party to market a particular design or idea has is just that – being the first, the original.

If a company has managed to successfully educate consumers about the link between its brand name and its product design, it will find it has obtained some ownership over the design in the minds of consumers. Once copycat or derivative products become a problem, the company can capitalise on the fact that it was the first to market the type of product in question by emphasising this in its advertising and marketing material. In doing so, it should be able to leverage the popularity of the original design through the medium of its brand name to ensure future success, for both the original and later products.

Designs as product identifiers

There has been a shift in certain areas, such that consumers can actually identify the origin of a product through design features alone. This has been the case in the world of fashion for some time, but it is now spreading into other areas, such as consumer electronics, with Apple’s iPhone being an obvious example. When it is sitting on a table, there are no visible logos or brand names on the product. Indeed, it is this ‘clean’ design that is part of its appeal. Turn it over and you will see the Apple logo, as well as the word ‘iPhone’ on the back.

This example raises two issues that need to be considered by all parties seeking to promote and rely on the popularity of a design – whether unknown or well-established brands. First, how is it that consumers can identify the origin of a product with such a simple design and no visible trademarks? Second, if consumers can identify the origin of the product without the aid of trademarks, are trademarks still needed?

The answer to the first question is simple: consumer education. The Apple brand has been built up and evolved over time, as has the iPhone sub-brand. Consumers know an iPhone when they see one because they have been educated to know what an iPhone looks like. While avid fans are likely to be aware of even the smallest details of the design of any given model, the level of public education by Apple is such that even those with no particular interest in or loyalty to Apple can often identify an iPhone without the aid of trademarks. However, perhaps even more crucial is the fact that consumers have been educated to know that an iPhone is an Apple product. It is this link which means that Apple will be able to capitalise on the success of the iPhone for years to come, even if there comes a point when it ceases to offer this product line. Indeed, the success of the iPhone can, in many ways, be linked to the success of the iPod device and, in particular, to the fact that consumers have always been made aware that both products originate from the same commercial source.

By educating consumers that the iPhone is an Apple product, the company aims to build brand loyalty to both the iPhone product line and Apple more generally. Advertising and product packaging that show Apple branding, iPhone branding and images of the product itself all play an extremely important role in such consumer education. However, the inclusion of brand identifiers on the actual product means that those who come across it in normal day-to-day life can quickly and easily confirm that it is indeed an Apple product, giving them confirmation of trade origin while also building a link between the traditional identifiers and the product design – thus enhancing the ability of the latter to play a role in origin identification in the future. The easily recognisable clean design alone cannot guarantee to consumers the origin of the product in the same unequivocal manner as these trademarks can. However, the fact that the marks are not prominently displayed on the front of the product suggests that Apple is happy to let its design act as the product identifier.

This leads to the second question: if consumers can identify the origin of the product without the aid of trademarks, are trademarks still necessary? In short, yes – for both legal and commercial reasons.

At the simplest level, a trademark is a clear and unequivocal statement that the goods that bear it originate from the trademark owner (assuming that they are genuine products). Therefore, even without familiarity with any given product, when a consumer sees a trademark on that product, this acts as clear confirmation of trade origin. Design, on the other hand, is more nebulous and open to interpretation. Different people will describe the design of a product in different ways. Therefore, it will always be difficult for designs per se to function as indicators of trade origin in the same way that trademarks do.

Having a clear indicator of trade origin displayed on a product means that consumers can quickly and easily determine who it is made by. However, it is not inconceivable that a given design could gain such widespread recognition that it could function well as an origin indicator, without the need for the additional guarantee provided by traditional trademarks. Even in these circumstances, such traditional trademarks should not be abandoned.

39450.jpg

The level of public education by Apple is such that even those with no particular interest in or loyalty to Apple can often identify an iPhone without the aid of trademarks

Predicting which designs will become popular with the public is a tricky, if not impossible task. It should never be assumed at the outset that any given design will be a hit or will in practice be able to function as an indicator of trade origin, particularly if separate protection cannot or will not be sought for the design itself. It is through use that a design comes to be known by the public and through such use that the producer will come to tell whether the design is popular and able to function as an origin indicator in practice. By utilising the strategy discussed above and ensuring that consumers know where the design comes from, producers can ensure that even if the design in question cannot ultimately function as an origin indictor without the support of traditional trademarks, it is not left to do so.

Even if a party is entirely confident that its design can and will function as an origin indicator, and indeed even if it can obtain registration for the design in question as a 3D trademark, it is difficult to imagine how such a design alone could function fully as a brand without a brand name. It is the brand name and how this is linked to the design that will enable the rights holder to capitalise on the design in question over time, even if it ceases producing it.

One of the realities of sidelining trademarks too far is that it can make life easier for counterfeiters

Whether the brand name is one that has been well established before the design in question is created and marketed or is new to the marketplace, as the design starts to take on the role of origin indicator, it is important to ensure that the brand name continues to be used to at least some extent – not least to ensure that trademark registrations for this name remain valid and can thus be used for years to come. As brand value becomes an increasingly important measure of the commercial worth of a company, the benefits of looking after trademark registrations should not be underestimated.

To ensure that a trademark registration remains valid, it is necessary to use the mark as registered – to use it as a trademark, and in relation to the goods and services covered by the registration. Where the design of a product can carry out the job of identifying the commercial origin of the product, there may be a temptation to cease using trademarks, on the basis that they are not commercially necessary and interfere with the design itself. Such an approach is short-sighted.

In the first instance, a period of five years or more without use of a trademark will usually result in a registration for that mark being vulnerable to cancellation. In some territories non-use for as little as three years can result in a loss of rights – rights which will have cost both time and money to obtain. By ceasing to use its trademark when selling a particular product line or type of product, a company runs the very real risk of weakening or losing the rights provided by its registrations.

Aside from helping to facilitate repeat purchases, trademarks enable those who own them to prevent others from using the same mark or a confusingly similar one to promote the same or similar goods. Even if a company is happy that the product’s design is sufficient to identify its commercial origin adequately, such that consumers do not need to see the company’s trademark on the genuine goods to know that they originate from that company, this is only half the story. Consumers finding the product they are seeking without the aid of traditional trademarks may be content. However, what of consumers who find a product that looks the same as the one they are looking for and – also like the one they are looking for – bears no trademarks? What if they have found a copycat product or a counterfeit product?

One of the realities of sidelining trademarks too far is that it can make life easier for counterfeiters. There is a real risk that consumers seeking to purchase a genuine product will instead innocently purchase a counterfeit item, with online shopping and the resultant inability to physically inspect items before purchase further contributing to the risk of such purchases occurring. Without being able to determine easily whether the products in question are genuine, any quality or safety problems encountered by consumers using them will negatively impact on the company that produces the genuine articles, and in particular on its brand image and brand value. By ensuring that the trademark is included somewhere on the product, or at least on the packaging, companies will know that they are not smoothing the way for counterfeit products.

Where the mark is not included on the product itself and there are no perceptible visual differences between the original product and a counterfeit in normal usage, there can be a temptation on the part of consumers to buy a counterfeit version of the product, in full knowledge that it is not the genuine article. The fact that certain consumers are willing to buy counterfeit products and indeed may even seek them out is a more general problem, but one that is more likely to be successfully tackled through clear use of trademarks on products than through producing products that bear no such origin indicators. There will always be a certain tension between aesthetic design features and the inclusion of trademarks on certain products. However, by carefully and consistently incorporating trademarks into the overall design of a product and by educating consumers as to where those trademarks can be found on a genuine product, companies can avoid many of the dangers associated with sidelining their trademarks for the sake of their designs.

In practice, designs and design features can go some way to giving consumers information on the origin of products, even where this is not the primary aim of designers looking to create functional and aesthetically pleasing items. It is only when a brand is fairly well known to the public that companies can even begin to consider putting the brand name in the background. However, it always needs to be present in order to prevent weakening the rights and potentially losing trademark protection. Companies should proceed with caution and always remember that while design fads will come and go, trademarks will remain with them forever – as long as they are properly used and maintained.

Patricia Collis ([email protected]) is a trademark attorney at Bristows LLP

Get unlimited access to all WTR content