Trademarks

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.

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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