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The Overlap between Trade Marks
and Design Rights
Lecture by Eric Ramage
to the international meeting of
The Institute of Trade Mark Attorneys
(April 2005)
When I was a lad I trained in a firm of patent agents. Every now and then they would allow one of us trainees sit in with a qualified patent agent interviewing a new client. Occasionally this august person having carefully examined the ‘shape, configuration, pattern and ornament’ of some object would sit back and pronounce that he saw nothing inventive, and that he noted nothing novel in the said ‘shape, configuration, pattern and ornament’, but had the client thought up a good name for the product?
Naturally, we trainees shorthanded this as “I can’t get you a patent, I can’t get you a registered design, but I might be able to get you a trade mark”.
Today, we are here to consider the reverse proposition. To what extent can protection be obtained for the trade mark by means of design registration?
But, first of all let us remind ourselves of the nature of the protection afforded by means of design registration and trade mark.
At the risk of over simplification:
Designs are concerned with appearance
Trade marks are concerned with trade origin
So where is the overlap?
According to Article 3 of Council Regulation No. 6/2002, (“the Design Regulation”), a design means:
"the appearance of the whole or a part of the 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."
Article 3(b) of the Regulation tells us that a product is any industrial or handicraft item, including among other things, parts to be assembled into a complex product, and also including: packaging, get-up, graphic symbols and typographical type faces.
Article 4 of Council Regulation No. 40/94 (“the Trade Mark Regulation,”) tells us that a trade mark is any sign capable of being represented graphically and in particular, trade marks may be words, ‘designs’ (which I interpret as what we call logos or devices), letters, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings.
As I said, Article 3 of the Design Regulation tells us that a design can be any industrial or handicraft item. Article 3(b) tells us that a design can also be packaging, get-up, graphic symbols and typographical typefaces A trade mark can consist of designs, letters, the shape of goods, or of their packaging.
Thus, a Design can be any industrial or handicraft item, while a trade mark can be the shape of the goods.
A Design encompasses packaging and get-up, and a trade mark encompasses the packaging of the goods.
A Design can be a graphic symbol or typographical typefaces, while a trade mark can be some sort of logo, or it can be words or letters.
There is of course a “but”. Or rather two “buts” Article 4 of the trade mark regulation, and Article 4 of the design regulation. The former tells us that trade marks can be protected only if they are capable of distinguishing. Article 4, of the Design Regulation, tells us that a design is protected to the extent it is new and has individual character.
This protection is subject to various exceptions which are outside the scope of this talk, and I do not propose to look at them here. They can be found in Articles 5, 6, 7, 8, 9 and 10 of the Design regulation.
Two things seem clear. First, a design is not concerned with any issue of distinctive character. The second thing which is also clear to any practitioner of trade marks is that there are certain categories of trade marks which are extremely difficult to protect.
If we look at what is actually being registered as designs with OHIM, these include typefaces, cartoon characters, flow charts, containers, shapes, labels, logos, and much more.
RCD 204706 – 0001 “Lush Chalkboard 16 point” illustrates an example of a typeface that has been registered. For Cartoon Characters see RCD 188719. A Flow Chart has even been registered as RCD3959-0001 under the guise of Teaching material.
As you might expect, containers are well represented, I have illustrated RCD 5855.0001.
Clearly, a lot of different products are being registered as designs. Many of these are what we would call conventional design rights, but others are not, so I will look briefly now at how “conventional designs” might be called upon to protect unconventional trade marks, and later look at more unconventional designs and conventional trade marks.
Staying with the subject of containers, Nestle applied to register a container for water as a trade mark which became the subject of an appeal to the CFI in Case T-305/02. The application was refused by OHIM who said it is devoid of distinctive character, and the decision was upheld by Fourth Board of Appeal, so Nestle appealed to the CFI. Nestle said that the shape of the bottle is neither “common nor necessary”. They said that the symbolic representation applied to the surface of the bottle is “new and original”, and that the “shape and the overall decoration” confer distinctive character.
Not a good argument, said OHIM. Originality and individualism are “criteria relating to copyright,” not trade mark protection. They also said that beverages are traditionally sold in bottles, and are every day consumer goods, so, the public to be considered is all potential purchasers in the whole EU.
When the appeal was heard, the CFI said that the overall impression must be analysed (case C-251/95 SABEL [1997] ECR I-6191, paragraph 23, and Case T-194/01 Unilever v OHIM (Ovoid tablet) [2003] ECR II-0000, paragraph 54. )
Although the shape and the grooves on the surface of the bottle are features of numerous bottles a combination of elements can be distinctive even if each is devoid of distinctive character, provided the various elements are ‘greater than the sum of the constituent parts’. (Case T-323/00 SAT.1 v OHIM (SAT.2) [2002] ECR II-2839, paragraph 49, and Kit Pro and Kit Super Pro, paragraph 29.) A minimum degree of distinctive character is sufficient to permit the mark to be registered. (Case T-34/00 Eurocool Logistik v OHIM (EUROCOOL) [2002] ECR II-683, paragraph 39, Case T-128/01 DaimlerChrysler v OHIM (Grille) [2003] ECR II-0000, paragraph 49.)
Therefore in their judgement of 3 December 2003 in Case T-305/02, the CFI decided that a combination of elements, each of which is devoid of distinctive character can confer a minimum degree of distinctive character. Having reached a conclusion on this point the CFI did not address any of the other arguments. OHIM however have made their position clear; originality and individualism are “criteria relating to copyright,” not trade mark protection.
A design must be ‘new and [have] individual character’. It does not need ‘distinctive character’. If we contrast refused CTM 10840 with Community Registered Design No.2670-0001, clearly there is a difference between that which has or is thought to have new and individual character, and so can be registered as a design, and that which has been held not capable of distinguishing, and refused registration as a trade mark.
It might be argued that this may have something to do with the fact that there is no examination for designs equivalent to the examination on absolute grounds that exist for trade marks. Or, it may be argued that some applications for example the refused bottle Application No. 10840 did not show itself to best advantage. This does not seem a tenable argument because CTM application 16057 shows a bottle presented in the six views in which we might conventionally present a design application in the United Kingdom. Unfortunately it was refused and so, pretending our trade mark is really a design does not help matters, unless of course your shape or container is thought be distinctive.
The fact that the CRYSTAL’AIR shape was presented as a series of colour photographs when it was registered as Community Trade Mark No 1985472 certainly helped get across the mark’s inherent distinctive character, the same shape also being registered in the United Kingdom, and as a UK Registered Design.
But why double up on protection? It may be appropriate to seek both trade mark and design protection for the same product for a number of reasons. In litigation, if there is a corresponding registered design the more the defendant claims that the public is not confused as to trade origin, but is buying purely on aesthetic or functional merits, then the more the defendant is caught by the allegation of registered design infringement.
On the other hand, where the merits are finely balanced, the courts may be more likely to grant an interim injunction on the basis of a trade mark registration than a design registration. There is a school of argument that Interim injunctions can be more difficult to get on design infringement, because the claimant can be compensated by an award of damages.
Third, quite simply it gives two strings to your bow. For example, when the CRYSTAL’AIR shape was litigated in the Patent County Court, Mr Peter Prescott QC sitting as a deputy judge held that there was infringement of registered design, because the shapes gave the same overall impression, but then decided not to consider the issue of trade mark infringement.
CRYSTAL’AIR being somewhat between a container and a shape brings us from containers to the question of shapes. For design rights, we consider, is it new and does it have individual character, but for trade marks we must consider, is the shape devoid of distinctive character? One added factor for trade marks is, to consider whether the shape results from the nature of the goods themselves, is it necessary to obtain a technical result, and does it give substantial value to the goods. I will return to these and to a couple of points I want to raise on design rights later in the talk.
One factor remains constant. It does appear a lot easier to get a shape registered as a Community Design, than it does to register one as a Community Trade Mark. Contrast here the fates of Community Registered Design 24740.0001 for a teddy bear with refused CTM 10579, for a doll. There is of course little point in trying to adapt the BABY-DRY argument to get your shape registered. The fact that your Client is not seeking to sell real babies, but is selling a toy which is “new and has individual character” will not assist in getting your shape registered if the shape is not capable of distinguishing, or if it adds value to the goods.
One might imagine why CTM 14480 for the shape of a lighter was refused, the Office has to be persuaded that shapes do function as trade marks. It may be equally unlikely that although it was accepted as a Community Registered Design, CRD 6143 for a gas lighter would have been accepted as a new and unused trade mark.
That said, our job is to try to give our Clients the protection they need either to enable them to sell their own goods with reasonably impunity, or to clear sufficient commercial space to enable them to maximise their sales.
Some less obvious situations in which we might employ design rights either to supplement or to replace trade mark protection lie in the fields of figure marks, labels, get-up and even words.
The figures illustrated as part of CRD 11515, are part of a multiple design. The multiple CRD Nos 4593.0001, 4593.0002 and 4593.0003 illustrate how you might go about getting a degree of protection for your Client’s labels. These various different labels have been registered by way of multiple design registrations.
Multiple Designs can cover any number of unrelated designs but these must be from the same Locarno classification. The same application can cover multiple designs for printed matter or multiple designs for toy dolls, but not different designs for printed matter and for toy dolls in the same application. Extra fees must be paid in respect of each additional design. This is cheaper than filing several discrete design applications, but even so it requires careful commercial thought in view of the likely costs involved.
A series of trade marks cannot be filed as a CTM, and is of limited value in the United Kingdom, being possible only where the marks differ as to matters of non-distinctive character not substantially affecting the identity of the trade mark.
Community Registered Design No. 18601 consisting of a simple cross on a white background presents an interesting proposition of what can be registered in the field of logos or figurative marks, especially when contrasted with refused Community Trade Mark No. 15511, which is of a monogram.
Obviously no talk to the Institute of Trade Mark Attorneys would be complete without looking at the Institute’s own design No 211-0001. This ITMA logo does not appear to have been registered as a trade mark as well as a design, although the design for ‘The One Account’ logo has been registered both as a CTM, No 3543071, and as a CRD No 22165. Perhaps not surprisingly I could not find a corresponding CTM for Community Registered Design No. 3582 which presents the word GATEAUX in fancy script. One wonders what goods will be packaged under the GATEAUX design by its proprietor RHM Ireland Ltd?
I will now consider briefly the rights conferred by a Community Design Registration, and contrast these to the rights conferred by a trade mark registration.
Article 12(1) of the Design Regulation sets out the rights conferred by registration.
Art. 12 (1): “The registration of a design shall confer on its holder the exclusive right to use it and to prevent any third party not having his consent from using it. The aforementioned use shall cover, in particular, the making, offering, putting on the market, importing, exporting or using of a product in which the design is incorporated or to which it is applied, or stocking such a product for those purposes.”
Briefly, Design Registration confers the right to prevent any third party not having consent from using it. This includes making, offering, or putting the product onto the market, importing it or even stocking it.
Article 9 of the Trade Mark Regulation sets out the rights conferred by Community Trade Mark Registration. The proprietor is entitled to prevent use of any sign which is identical to the registered mark on goods or services which are identical to those covered. If the marks or the goods are not identical but similar, then the Claimant must prove likelihood of confusion.
The trade mark infringer is prohibited from fixing the sign to goods or packaging or offering goods for sale, putting them on the market or, stocking them or supplying services under them.
