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How to register an application’s icon

Trademark or design? This is the question

The exponential growth of applications for mobile devices is strong. Every day is more common to use several of these applications in our daily life and many new ones are arising to meet our personal and professional needs.

In such a competitive and visual market, the icon that identifies each application is a fundamental distinctive sign: users will recognize the app through it both in online stores as its own device application and associate its usefulness, how well they go with it, how facilitate work, help them in their training, etc. As a regular user, there are several applications that I use almost on a daily basis, whose icon I have special appreciation.

In the applications market, visual field established by the screen itself is fundamental, such as the image of icons identifying each application. Therefore, it is easy to realize how important it is to have an exclusive right to use such icons. 

It is clear then that the use of identical or similar to our icons by third parties should be avoided because of the confusion they might generate among users. It is also clear that having a record of this valuable icon will be an important asset for the commercial use of the application.

To achieve the registration we should know that there are two different ways we can use to legally protect an application icon. 

  • Registered trademark
  • Industrial design

Frontier between the two registration categories is sometimes fuzzy, but in practice the use of one or the other can be justified, and that’s what I’ll try to clarify.

Trademarks and designs present a clear similarity:

  • Like all industrial property registrations, trademarks and designs are territorial and granted independently by each state. For both trademark and industrial design exists the possibility of a Community registration: very interesting option which allows through a single procedure and amount to obtain protection within the 28 countries of the EU.

Let’s see for separate the differences between the two modalities.

How to register an application’s icon. Industrial design.

An industrial design is the appearance and ornamentation of a product, which makes it visually different from the others. This general definition covers:

  • Tridimensional elements, like the shape of a particular product;
  • Two-dimensional elements, such as ornaments, figures or products’ colors;
  • A combination of both elements.

Therefore mobile application icons meet this definition, so they can be registered to monopolize its use.

I show you some real examples of designs registered by Apple Inc.

 diseños inconos apple

However, industrial designs present a few limitations that must be taken under consideration:

  • Industrial designs protect novelty and uniqueness of the objects themselves. Novelty is especially important in this case considering that a registered industrial design which has been sold or exposed before its application could be easily nullified for lack of novelty.
  • Besides, industrial designs are registered for a maximum of 25 years renewable every 5 years from the time of application. 

These two reasons are good enough to dissuade from using this registration modality to protect an application’s icon. 

However trademarks can be renewed every 10 years without a time limit and it does not require novelty, which makes it an excellent choice as we are going to discuss below.

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  • asean tmview

Asean Tmview: trademark’s finder for Asian countries

As a matter of logic, the best advice an IP professional can give before registering a trademark is to ensure that the trademark is viable.

This trademark viability study is very common in our daily work routine, in which we often use IT tools for the consultation and searching of registered and filed trademarks, both pay tools (only for professional use) and free tools, which can be used by everyone.

One of the most powerful and also free tools to realize this trademark search is the TMVIEW platform: cooperation project between OHIM, WIPO and national and regional trademark offices in the EU which allows making online trademark searching among all adhering offices.

After the huge success that this trademarks locator has reached (comprising more than 30 countries) now has come its Asian version: Asean TmView, officially announces last 26th of August in Singapur.

This is how the trademark locator looks like on its official website:

Asean Tmview (more…)

2019-04-19T06:20:19+02:00Categories: Press release, Trademarks|Tags: , |
  • trademark registration of ice bucket challenge

Trademark registration of Ice Bucket Challenge

Last week the protagonist on social media has been, no doubt, the campaign called “Ice bucket challenge”: the viral iced shower campaign created for charity with the intention to raise fund for research and fight against the degenerative neurological disease ALS (Amyotrophic Lateral Sclerosis).

The Ice Bucket Challenge is an idea of Pete Frates, promise of baseball and ALS sufferer; the American Association (Amyotrophic Lateral Sclerosis Association) developed the idea and turn it into a viral social campaign which has raised in the US over $60 million from the donation of people who has poured a bucket of iced water over their heads.

Now it seems that part of this money will possibly be used by the association for the trademark registration of “Ice bucket challenge” phrase.

According to the USPTO database, the ALS association applied last August to register both “Ice Bucket Challenge” 86375292 and “ALS Ice Bucket Challenge” 86375305 as trademarks; in the application, it is specified that the use of such trademark will be for charitable fundraising. (more…)

  • Tipos de marcas registradas ejemplos

Types of trademark registrations: Trademark examples

One of the most common questions when it comes to register a trademark is about what can be protected as a trademark.

Currently in this regard and based on the criteria for the Office for registration of trademarks and designs of the European Union (OHIM) exists the following types of trademarks, and therefore the related possibilities for protection.

  • Three dimensional trademarks: as the name suggests are those that provide three-dimensional figures. We have as a recent example the following CTM under the ownership of SOREMARTEC SA 05/12/2011:

  •  Color trademarks: in this case is about the registration as a trademark of a color / set of colors that is very representative or highly distinctive. We have the example of the CTM registration of Jean Henaff SA issued 03/01/2012 for Classes 29 and 30.

These applications are accompanied by a description, in this case: The trademark represents a rectangle blue. In parallel with the entire lengths of the rectangle, up and down, we find a yellow thick line, separate from the main box by a slight gap.

In addition to an indication of color, in this example: Blue: PANTONE 2748 CMJN Code Code: Cyan 100% Magenta 88% black 14% yellow: PANTONE CMJN Code 109 Code: 100% yellow.

  • Sound trademarks: As can be deducted by its name, it is about trademarks registration representing a very distinctive sound or melody. We have as example the recent application of the company ENERGY Spółka Akcyjna of the following Community trademark for all classes of services.

 Listen to this trademark: Sound trademark

  • Figurative trademarks: trademark registrations which identifies an image or characteristic graphics associated to a denomination. Basically, they are used for the registration of logos identifying the corporate image of a company, its goods and services. We have the example of the CTM holder “GAMMA-A”, SIA through which identifies their canned fish.

(more…)

2019-04-19T06:20:21+02:00Categories: Trademarks|