3D-trademark or design right?

Protectability of external appearance of a product: 3D-trademark or design right?

As discussed in our previous article by senior partner Rudolf Pendl, recently the General Court of the European Union stated that the shape of Guerlain’s lipstick case is entitled to trademark protection. However, in certain cases the shape of a product may (also) be protectable as a design.

Both trademark and design protection are registered rights which can help to secure the intellectual property of a company. However, there are some key differences to both kinds of rights:


The main function of a trademark is to enable consumers to distinguish the goods or services of one undertaking from those of other undertakings. One of the main requirements for their registrability is, therefore, their distinctiveness. This applies not only to “traditional” trademarks consisting of names or figurative elements, but also to trademarks consisting of a certain shape or packaging of a product. Such shapes and packaging are protectable in case they enable the customers to associate the goods or services with individual undertakings.


Designs, however, do not have to be distinctive, but must rather be new and have an individual character, i.e., they must not be identical to previous designs and produce a different overall impression from designs previously made available to the public.


These different requirements for the protectability of trademarks and designs are based on the respective aim of legal protection. Whereas the purpose of a trademark is, among other things, to enable customers to identify the origin of a product or service from a company, the focus of the design is primarily on the protection of the company’s investment for the development of a new shape.


In addition, both IP rights have different terms of protection. While trademarks are registered for 10 years and can be renewed indefinitely, designs can be registered for 5 years, renewable up to a maximum of 25 years.


However, despite the limited protection in time, the design right offers several advantages over three-dimensional trademarks.


Firstly, it can be difficult to get a three-dimensional trademark registered. In contrast, the registration procedure for design rights is relatively fast. Therefore, design rights are particularly suited to protect product lines that vary quickly in time and have a limited life cycle (e.g., fashion products that are produced and marketed only for the time of a season). In addition, EU legislation also provides protection for unregistered Community design rights, which protect an unregistered design to a limited extent (against copying only) for a maximum period of three years from the moment it is first made available to the public in the EU. Unregistered trademarks are usually only protected when they are sufficiently known among the relevant public which is generally rather the exception.


Unregistered Community design right can even be transformed in a registered design right if the application for registration is made within 12 months after the product incorporating the design was first made available to the public in the EU. Therefore, they are particularly useful for companies to evaluate the performance of the product in the market before deciding whether or not to proceed with registration.


Trademarks and designs, therefore, meet different needs and are granted on the basis of different requirements. Thus, if the registration of a three-dimensional trademark is refused, this does not mean that the shape of the product cannot be protected as a design right. In contrast to trademark applications, the competent authority does not automatically check whether the design is new or has individual character when a design application is filed, but only at the request of a third party. This means that a design right offers faster protection, but also more legal uncertainty if a competitor takes action against the design.


In the case of Guerlain’s lipstick, the shape of the product had already been protected as a Community design right since 2008 which helped to prevent competitors to mimic the unique design. In the trademark proceedings ten years later, the application was initially rejected, but in the end the lipstick case was deemed distinctive by the General Court of the European Union and approved as a trademark.


This shows that the clever use of design and trademark protection can help to protect the investments made by a company to create products with an innovative appearance. Since both forms of protection are cumulative (one does not exclude the other), both IP rights should always be considered for products with a particularly innovative or distinctive shape which could prove to be valuable assets for the owner.

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