Registered trade marks and designs – dual protection for a logo

The primary form of protection for a logo is a registered trade mark. However, a registered design can also offer some valuable additional protection and should also be considered as part of an overall brand protection strategy.

A registered design is sought when protection for the appearance of the whole or part of a product is required. A ‘product’ is broadly defined and includes graphic symbols such as logos. Therefore, it is possible to protect a logo as both a registered trade mark and as a registered design.

There are some potential advantages in protecting a logo as a design registration in addition to a registered trade mark. As there is no substantive examination procedure involved when seeking to obtain either a UK or Community registered design, an application is likely to be registered quickly, sometimes within a week or two, thereby establishing a registered right whilst the registered trade mark application is undergoing examination and when questions may still arise as to whether the logo is sufficiently distinctive to be registered as a trade mark.

Registered designs are not limited to any particular type or class of goods or services, unlike a registered trade mark which is limited to particular classes of goods or services that must be specified when the application is filed. This means that the protection afforded by a registered design extends to the use of the same logo (or any similar logo that is said to produce the same “overall impression”) irrespective of the goods to which the logo has been applied or the service with which it is associated. A design registration can therefore be used to prohibit the logo forming the subject of the registration being applied to any product or used in relation to any service rather than to those products or services specified at the time of filing of a registered trade mark application.

A registered trade mark can be revoked on grounds of lack of use. However, as there is no obligation on the owner to use a logo forming the subject of a registered design, it is not possible to revoke a registered design in this way.

It is possible to file a multi-article design application containing multiple different logos to protect small variations, or different colours, of the same logo, which may be an important consideration in territories where only a single version of a logo can be protected with a trade mark registration, and where colour differences make a material difference to the protection provided by a trade mark registration.

A design registration should not be regarded as an alternative to trade mark protection, which is generally the most desirable form of protection for a brand, particularly as a registered design has a maximum lifespan of 25 years and must be novel at the point of filing, or within one year of filing where a grace period operates. Therefore, a design registration should be considered as an additional form of protection for a logo that can be protected as a registered trade mark indefinitely. However, a registered design can provide some valuable additional intellectual property protection to complement the protection provided by a registered trade mark. Obtaining protection under both rights should therefore be considered as part of any brand protection filing strategy.