Think BR: A quick and easy route to trade mark protection in Europe
A little-used tactic can speed up and reduce the cost of protecting brands against counterfeiters in Europe, explains Mike Lynd, UK partner, Marks & Clark, and member of the Institute of Trade Mark Attorneys.
Mike Lynd, UK partner, Marks & Clark
Applying to register a Community trade mark is the obvious and most used route to getting protection for your brand in Europe. It’s a tried and tested procedure, but it does have drawbacks:
- Getting a trade mark takes time: typically 12 to 24 months.
- Trade marks are uncertain: competitors or others can file an opposition to your application; further, OHIM (the European trade marks registry) may reject your application for a variety of reasons; and, if you stop using a trade mark, you may forfeit your rights to it.
- Trade marks are restricted: protection applies only to the categories of goods or services for which you have registered.
A little used - but perfectly legitimate - route for protecting certain kinds of trade marks is to use the European Community registered design system.
This provides brand owners with important and valuable protection for trade marks. It has the advantages of being fast and costing very little.
The sorts of marks that can be protected by way of Community registered designs are stylised words, logos and combinations of logos and words.
As may be seen from Ladbrokes example below, the degree of stylisation need not be very great. The Community design registration route may be an alternative or an adjunct to a trade mark registration programme.
Main features of Community registered design system
Covers the whole EU
As might be expected from the name, a Community registered design extends to all 27 Member States of the European Union (actually 28 because Gibraltar is counted as a member of the European Union).
Since a Community design registration automatically lasts for an initial period of five years, the protection afforded by a Community registered design works out to less than £6 per country per year - astonishing value for money.
Community registered design applications are given only the most cursory examination by OHIM (the Office for the Harmonisation of the Internal Market - the EU’s trade mark and design registry in Alicante, Spain).
As a result, an application for a Community registered design can proceed to registration in as little as four to six weeks.
The system provides an exceptionally fast way of providing more or less instant protection. In contrast, a Community trade mark application may take from 12-24 months to proceed to registration - even if no oppositions are filed against the application.
Community design law provides for a 12 month grace period so, unlike patents, the disclosure or publication of a design/trade mark before the application is filed will not immediately be fatal to the validity of the Community design application.
The regulation defines ‘design’ as 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’.
It goes on to define ‘product’ as to mean ‘any industrial or handicraft item, including - inter alia - parts intended to be assembled into a complex product, packaging, get-up, graphic symbols and typographic plate faces’, but excludes computer programs.
So the Community registered design is broad enough to include trade marks in the form of:
- Logos and devices
- Marks in the form of stylised words and phrases, and
- Composite trade marks, consisting of logos and words or phrases.
When you file a Community registered design application you have to indicate the article to which the design is to be applied.
But that article can be defined simply as ‘graphic symbol’. And the rights afforded by the Community registered design are not limited to the particular article specified in the application: any party using the design in relation to any goods or services will be infringing your registered design.
Robust and durable
Full trade mark registrations are vulnerable to cancellation if they have not been used within the previous five year period.
However, there is no requirement to use a Community registered design in order to keep it in force.
Since a Community design registration can be renewed four times, it can provide up to 25 years’ protection.
This is a remarkably fast, cheap and effective way of acquiring lasting protection for a trade mark, even in circumstances where the nature of the trade mark might cause the UK IPO or OHIM to refuse to allow its registration as a trade mark.
Multiple registrations for greater protection
More than one design can be covered in a single Community registered design application, so the designer owner can rely on multiple designs to prevent infringement.
So, for example, a company re-designing its potato crisps product range could protect each of the ‘salt and vinegar’, ‘cheese and onion’ and ‘smoky bacon’ packages by way of a single design in a multiple registration application.
Each of those separate packages would be separately protected by an individual registration.
Simple, cheap, effective
Ultimately, trade mark registration is likely to give stronger protection than design registration. This is because a registered trade mark can last forever, and there can be an absolute right to prevent infringement.
For example, a registered trade mark gives you the absolute right to stop an infringer from using the identical mark in relation to goods or services which are identical to those for which the mark is registered.
Against this, the Community registered design system provides rapid, wide protection at low cost.
For these reasons, trade mark owners should include it as a routine part of the arsenal of weapons in their fight against trade mark infringers and counterfeiters.
Community Design Registration no. 000833975-0009. It is hard to imagine that this minimalist icon could be registered as a trade mark.
Community Registered Design no. 000746593-0004. Once again, it seems unlikely that such a non-distinctive mark could be the subject of a trade mark registration.
Community Design registration no. 002040063-0001. An example of registering a trade mark as an RCD to achieve much more rapid protection for the mark than would be achievable by way of a trade mark registration.
This example also indicates how little stylisation need be present for a trade mark/design still to be registrable.
Mike Lynd, trade mark attorney and chartered patent attorney, UK partner, Marks & Clark and a member of the Institute of Trade Mark Attorneys
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