Additional logo protection by design registration

A company logo or another symbol serving as distinguishing feature of a company is a valuable asset in need of protection. The figurative mark offers an appropriate means to have such a logo or graphic symbol monopolised, also in combination with word marks, where required.

In addition to brand registration, more and more companies also use the design law to strategically steel themselves against imitations and copycats. The benefits of a registered design lie where the brand protection reaches its limits due to its different protection focus, which may establish a need for amendment:

Trademarks are generally only registered if the consumer can find indications of their origin in them. Such an indication of origin is often denied to marks that consist of only describing or promoting words or, if the mark does not include any word element, may only be regarded as graphic embellishment in the relevant trademark office’s point of view. Such a visible indication of origin is not required for the design registration. In theory, the simplest graphic symbols – as long as they are new – can be protected. This provides the person seeking protection with a large leeway to define the scope of protection of its own logo. For example, in addition to the brand registration, individual elements of the logo may be protected as design that may not be capable of being a trademark.

How small the protected segments of the logo are is left to the person seeking protection. The protection of several designs can be obtained rather cheaply via the multiple application allowed in design law. As the office does not check any origin-indicating function of the design (see above), the registration usually only takes a few days.

Contrary to trademark law, the registered design does not have to be used. Even if a design is not used alone in business relations, it may be valid for up to 25 years.

As the design protects a manifestation irrespective of any specific goods or service reference, it is even possible to take action against the use of a mark outside the industry from a logo protected as design – an option that is only reserved to known marks in trademark law.

However, the mark cannot be replaced by a design. A design is registered without any material-legal review, but can generally only be protected if it is new at the time of application, and therefore the actual manifestation applied for is not yet identically pre-published. To avoid legal disadvantages, a design application should therefore always be filed prior to the first use of a logo or graphic symbol. In contrast, a trademark does not need to be new, which is why words of the general vocabulary can also be protected as trademarks. The maximum total protective period of a design is limited to 25 years, while trademark protection applies for an indefinite period of time. Generally speaking, the trademark infringement of a logo is more often affirmed than a design infringement, as the audience in design law is more receptive to differences between marks.

Conclusion: Trademark and design law complement each other and may be strategically combined for the protection of distinguishing features of companies. Where trademark protection by definition has gaps, they can be closed by a design application. Before a new logo or graphic symbol is launched in the market, the possibility of design protection should therefore always be taken into account. The same also applies to the design of packaging, which can also be protected as a trademark and in the form of a design.