Exploring Trademarks and Design Rights

Trademarks and design rights are type of the Intellectual property system that identifies products, signs, services. Both systems play a key role in the modern life in order to promote competition and creating a balance of interests. In a design system, have a design right protection is based on basic requirements which might be flexible comparing to the trademark system, as the applicant can acquire a protection by filling the registration form without substantial examinations and leaving the claim of infringement for a third party. On the other hand, trademarks law enacts a registration absolute ground for refusal, which is a strict criterion for register a mark due to the importance of the trade and public interest. This essay begins by outline about the meaning of design rights and how is the system work. Secondly, an outline about the trademarks laws, the meaning, the protection and exclusions. Thirdly, a comparison between the TM and DR is effective to outline around the overlap between these systems. The last part of this essay is a discussion about the importance of the registration absolute ground for refusal and how each element of the system impact on trademark society. Law dissertation help is available for all the students who are navigating the complexities of intellectual property law.

What is the Design Rights? And what can be protected under the design? The Community Designs Regulation was adopted on 12 December 2001 and entered into force on 6 March 2002. Article 3 of the Community Designs Regulation defines "design" as "the appearance of the whole or a part of a 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". Moreover, products defines as any industrial or handicraft item contains: Get-up, graphic symbols, typographic typefaces, packaging and parts intended to be assembled into a complex product, and excluding computer programs. In addition, it defines complex product as, a product contains a several components which can be use in different way by replaced and recollect the product, and the definition is outline the “look and feel of a product”. On the other hand, design rights does not apply to the sign that contracted the morality and public policy, also, if the trader claim a protection and the product contain, non-visible features, must-fit features and must-function features are eligible and excluded from obtaining a product.

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1. Regulation (EC) No. 6/2002 on Community designs
2. Art.1 Directive/Art.3 Regulation (a)
3. Ibid (b)
4. Ibid (c)

In addition, a design has to have an individual character and is required to be new “Novelty” has not been available to the public. A design will considered contains an "individual character" if

"The overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been made available to the public". “And Community designs are considered to be new if no identical design has been made available to the public: Before its filing or priority date, in the case of a registered Community design. Before the date on which the design was first made available to the public, in the case of an unregistered Community design.” However, a product contains a technical function is excluded from protection. That means, the law does not protect the functionality of the invention instead it protects the appearance of the product.

Registration in the community design is simple, quick and cheap to register and field with the Office of Harmonization in the Internal Market, the OHIM is the administration responsible of the trademark community and design community, industrial property which have an impact on communities. The office has five languages, English, French, Spanish, German and Italian, the office based in Alicante in Spain. In the stage of register a product at OHIM, the design will not be subjected to examined, indeed, respect the public morality is the main factor the Office of Harmonization in the Internal Market concerns about.

1. See Directive, supra note 75, art. 3(2); Regulation, supra note 76, art. 4(1).
2. (Article 6, Community Designs Regulation).
3. Community designs: the key features and scope of protection by Audrey Horton and Morag Macdonald, Bird & Bird
4. Directive, supra note 75, art. 7; Regulation, supra note 76, art. 8.
5. North-western Journal of Technology and Intellectual Property

The design rights protection obtains the sign holder the exclusive right to use the sign and prevent a third party, who has not the permission from the holder to use it. Moreover, the statute emphasised on that, “the protection scope of the protection conferred by a design right shall include any design which does not produce on the informed user a different overall impression” the second, the designer freedom of developing their product must take into account.

What is the trademark? The trademark is a source of reputation and the strategic assets of the firms that compete for customer’s loyalty and product differentiation, success the trademark will higher the profit for companies because this succeeds associated with the perceived value to users. However, the trademark under the European system has been determined as, first, must be enable consumers to distinguish goods or services in the market, second, the mark should be represented on the Register of European Union trademarks, in a way that enable public and competent authorities to identify the protection subject matter giving to its proprietor. To illustrate, signs must be conform to these general requirements to obtain a protection. Moreover, a sign may contain personal name, letters, shape of good, packaging of good, design, sounds, numerals, colours, specific words.

Obtain a protection under the European Trademark law, another specific criteria is required, which is the registration of ground for refusal, the grounds for refusal has been divided into two categories. The first one is, invalidity based on "relative grounds", which is the earlier trademark rights which is association with a third party and produced conflicts. The other one is, invalidity based on "absolute grounds" which is relation to the essential characteristic of the mark. The absolute ground for refusal received considerable attention on the trademark society.

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1. Ibid
2. Art.9 Dir/10 Art CDR
3. The importance of Trademarks and a review of empirical studies Mirësi Çela1, PhD Candidate
4. EUTMR Art.4 (a)(b)
5. EUTM. Art.7 (a)
6. ibid
7. Absolute and relative grounds for refusal to register a trade mark
8. (TMA 1994, s 5 and Article 8 of Regulation (EU) 2017/1001)

Distinctive, descriptiveness, bad faith, generic trademarks, misleading, and exclusions based on shape or other characteristics are taking into account as absolute ground for refusal because of its importance in influencing the public interest. To illustrate, generally speaking, a product contains one of these elements that will be excluded from protection for variety of reasons, all of them cause the same result which is impact the competition and public interest, and exclude all of the from protection reflects a positive impact on society.

It appears that, the difference between the both systems is that, Community Trademark and Community Design both are classified different excluded subject matter. These exclusions clarified that, the CTM is stricter than the CD in their requirements. The CTM excluded shapes which established from the nature of goods and might add “substantial value” to the product, while the CD is less strict, which the excluded subject matter is concern about the “mechanical fit” “functionality” when it is found in the product that means the application will be rejected. The cost of obtaining a protection in registered design community is affordable comparing to the community of trademark. Furthermore, the procedures of register a product in the RCD is more flexible and fast comparing with the CTM whereas obtaining a protection may takes a while. On the other hand, the scope of protection on trademarks right is permanent while the protection on the design rights is on limited-period of time can eligible to renew.

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1. “(section 3 of the Trademark Act 1994 (TMA 1994) and Article 7 of Regulation (EU) 2017/1001)”
2. Absolute and relative grounds for refusal to register a trade mark
3. The overlap between registered Community designs and Community trade marks
4. Ibid
5. Northwestern Journal of Technology and Intellectual Property
6. Trade mark litigation in the UK (England and Wales): overview by Susie Middlemiss and Laura Balfour, Slaughter and May

Although each system outlined their subject matter that there are some overlap that has been found, as some designs can be registered as a trademark right and some trademarks can registered as design right, in this situation of where these boundaries are absent. For example, there are several attempts to register the shape of food and candies as CTMs but it was refused each time, because of the lack of distinctiveness of the shape, but then the Nestle water bottle has been succeeded in getting a trademark right due to the distinctive shape.

“a particular appearance which, taking account also of the overall aesthetic result, is capable of holding the attention of the public concerned and enabling that public, made aware of the shape of the packaging of the goods in question, to distinguish the goods covered by the registration application from those with a different commercial origin”.

Overlap between Intellectual property rights is challenge for the authorities as sometimes it may harm the market by confuse the traders and consumers. Overlap has different themes. For example, “concurrent or simultaneous overlap” when one of the IP rights protect the same idea on the same object at the same time, “posteriori or subsequent overlap” when a protection of a specific right has expired and the owner move to protect the product by another right. For example, when the protection of a design expired and the holder apply to register it as a trademark. The negative overlap happens, when the inventor cannot grant a protection for their design and resort another IP rights or uses unfair competition to close the gap. For example, putting the word “Audi” on cars’ bonnet, as the word protected by trademarks and the bonnet may protect by design or copyrights.

Although, the criteria for absolute grounds for refusal may confuse the trademarks community, and many cases might be hold in courts to discuss for years, each element that is reflected as an important result on the trademark society.

1. Design as a trademark https://www.duo.uio.no/bitstream/handle/10852/54429/1/722.pdf
2. The overlap between registered Community designs and Community trade marks
3. ibid
4. E.g. Lego Juris A/S v OHIM and Mega Brands Inc.(C-48/09 P) EU:C:2010:516, paras. 43 ff.
5. Design litigation in the EU Member States: Are overlaps with other intellectual property rights and unfair competition problematic and are SMEs benefitting from the EU design legal framework?

The importance of excluding a sign that is lack of a distinctive is, to avoid confusion of the consumers. For example, the Polish Court refused the application of a sign for “fabric softeners and laundry detergents for removing dirt and stains” because of the lack of distinctive in the sign, as a “Absorbetka kolorów”, literally means “colour absorbent”, the court stated that, the sign mean would confuse the consumers and unable them to distinguish the goods from the other, also, average consumer would understand that “absorbent” derived from “absorption” which the result of combining these two words the average person will understand that “colour absorbent”. The great importance of having distinctiveness in a product is, first, it can be helpful, when it comes to indicate a source to protect the goodwill, which will enhance the product quality by investment, and the second reason is that, it helps to increase the level of protection against the exploitation of the trademark, which also helps to protect the trademark holder’s investment, the third reason is, to identify the services or goods from a source, and that might lower the cost of search for the consumers.

The importance of excluded marks, contain an exclusive signs or indication, that might be used in trade to determine the quality, quantity, kind, the time of production, geographical origin, time of production, value, or rendering of the services or other characteristic of the services or goods. For example, “COLD AND CREAMY” for ice cream will not grant a protection, as it describes the what services are provide, also word such as “best” or “quality” will be refused to register because that is a monopoly. In another word, the reason behind the exclusion of descriptiveness is that, descriptive terms should not obtain an exclusive right, because other traders may want to use it. However, the office does not have to show that, “there is already a descriptive use by the applicant or its competitors”. Consequently, the amount of competitors might be affected, which is totally unrelated. Therefore, if the word is descriptive and ordinary, “this ground for refusal cannot be overcome by showing that the applicant is the only person who produces, or is capable of producing, the good in question”.

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1. EUTM Art.7 (b)
2. Distinctive character of a trademark / http://www.codozasady.pl/en/distinctive-character-of-a-trademark/
3. The Bottle Is The Message: only the distinctive survive as 3-D community mark Dr. Danny Friedmann , Chinese University of Hong Kong
4. EUTM Art.7 (c)
5. Fact Sheet: Introduction to Trademarks Trademark Strength Updated: November 5, 2020, https://www.inta.org/fact-sheets/trademark-strength/

Marks and indications are customary in the trade practice and current language is not eligible to obtain a protection. For example, using the word banana to describe selling banana is effective. Customary as a requirement, also plays an important role and described as using a generic term of the product. For example, it is impossible for word “Apple” to grant a trademark for “Apple”, as it is a general description for fruits, but it can be allowed to use “Apple” to describe computers products, because this description is not related to electric goods. Generally speaking, the reason behind this refusal is that, the generic words should not be monopolising as it might harm the market and traders in their business.

The importance of the exclusions of marks contain exclusively of the shape or another character of goods, which is necessary to obtain a technical result or gives a substantial value to the goods and shape or another character maybe a result from the nature of the good. Because many cases have been held in courts due to this matter such as Philip, Hauck 2014, Nestle v Cadbury (“Kitkat four-fingers shape”) and Lego and it appears that, this field is the hardest field to have a decision around the validity of the sign regardless the different decisions. For example, Louboutin’s red sole case is one of the most controversial cases in regards to this matter as it took several years and turned out that it does not fall within absolute ground for refusal The CJEU judgment in Christian Louboutin v Van Haren Schoenen is that, “the mark did not seek to protect a shape and only sought only to protect the application of a colour to a specific part of a product”. Thus, the court states that “the shape was not define as part of the application” It appears that, the EU trademark system avoid obtain a protection over functionality to keep the market free for all traders to use.

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1. Section 4 Absolute grounds for refusal — Chapter 4 Descriptive trade marks (Article 7(1)(c) EUTMR)
2. EUTM Art.7 (d)
3. Trademark Protection, Absolute and Relative Grounds for Refusal of Trademark
4. EUTM Art.7 (e)
5. https://link.springer.com/article/10.1007/s12027-016-0423-6#Sec6
6. Louboutin red sole does not fall within absolute grounds for refusal, says CJEU.

Also, the importance of exclusion of any signs might contrast to the public policy or morality principles that have taken attention from the law makers and civil society. For instance, all applications referring to drugs have been refused, as it is contracted the principle of morality such as the “CANNABIS STORE AMSTERDAM” also, the applications contains a sextual words or innuendo that are refused such as “Fuck” and “FACK JU GÖHTE”. To illustrate, morality and public interest comes at the top of the pyramid when any law is enacted, and trademarks law have imposed strict requirements in this area. Governments emphasised that, any sights might scratch the public morality such as sexually explicit messages or unlawful behaviours like consumption of illegal drugs. For example, the General Court refused register the sign “Hijoputa,” which means in Spanish “son of a whore,” the court decision because that the expression spread an insulting message to the public. Moreover, any sign that may affect the public policy such as messages that offended religious belief, support terroristic organization or remind people of a terrorist organization is refused. For example, the OHIM Board of Appeal rejected the registration of the sign “Bin Ladin” for an import/export company, although, the claimant arguments that, the application filed within four months before the 9/11 attacks and they did not mean to remember the founder of al-Qaeda, but the application refused because the name “Bin Ladin” of the Islamist terrorist, who was famous to the public even before September attacks. Persuasively, the court of First Instance in the case of 'la mafia - se sienta a la mesa' emphasised that, it is essential to pay attention to public policy and principles of morality when applying the absolute ground for refusal to all the EU member states and individual states, the criteria of the absolute ground for refusal must be based on the standard of the average sensitivity person, reasonable and tolerance, not limited to people where the goods and services are delivered directly to them because such signs will also shocks other people.

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1. Brands, Morality and Public Policy: Some Reflections on the Ban on Registration of Controversial Trademarks EUTM Art.7 (f)
2. https://www.cms-lawnow.com/ealerts/2020/04/trademarks-public-policy-and-principles-of-morality-in-the-time-of-corona?cc_lang=en
3. Brands, Morality and Public Policy: Some Reflections on the Ban on Registration of Controversial Trademarks
4. López v. OHIM [2012] S.T.G., Dec. T-417/10, No. 207/2009, para. 23 (Spain).
5. Brands, Morality and Public Policy: Some Reflections on the Ban on Registration of Controversial Trademarks
6. Switz. Trademark Application Serial No. 2 223 907 (filed Sept. 29, 2004) (Switz) (stating that the al-Qaeda leader was known as the orchestrator of the U.S. embassy bombings in Nairobi and Tanzania in 1998, which triggered the United Nations Security Council Resolution 1267 of Oct. 15, 1999). Similar decisions have also been taken in the United States. See, e.g., U.S. Trademark Application Serial No. 77/086,418 (Feb. 6, 2007) (U.S.) (rejecting the application “OBAMA BIN LADEN” because, amongst other things, it referred to a terrorist and associated him with a U.S. presidential candidate); U.S. Trademark Application Serial No. 78/400,213 (filed Feb. 23, 2005) (U.S.) (rejecting “BABY AL-QAEDA”); U.S. Trademark Application Serial No. 78/444,968 (filed Nov. 22, 2004) (U.S.) (refusing registration of “AL-QAEDA” because the sign refers to an organization that undertakes the bombing of civilians and other terrorist activities that are contrary to the sense of decency)

In addition, a sign which may lead to deceive the public by the geographical origin, nature or quality of the good or services is also be reject. For instance, mislead the public by wrong information about the product whether about the services provided or misleading the public by the original geographic such as: “a French city as a trademark of a perfume or to a Swiss city as a trademark of a clock”.

The meaning of bad faith has not mentioned in legislation. Instead, it has been explained by the Court of Justice of the EU (CJEU) in number of its judgements, it says that, the trademark holder did not ably for registration because of engage in fair competition in markets there are other reasons such as: harming third party interests or to obtain an exclusive right for reason not that supposed to be for trademarks law.

Consumers appreciate having a trademarks system in market, because that allows them to distinguish goods without any confusion and misleading, and the consumers have the flexibility to like a product more than the other because of different values such as, the effectiveness and functionality, the way of using it, and the reliability of the product. Moreover, the purchase that the consumers used to buy is called an “experience good”, features of good are of two types “variety feature” and “quality feature” where the consumers are concerned about the quality more than variety. It should be noted that, the reason of trademark protection support firms to promote and produce the products that the consumers are looking for, and facilitate the consumer decision.

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1. EU: Court takes firm stance on basic European principles and values, London2018
2. Article 7(1)(g) EUTMR
3. Need to know: ‘Bad faith’ in trademark law, https://www.novagraaf.com/en/insights/need-know-bad-faith-trademark-law
4. https://www.wipo.int/edocs/pubdocs/en/wipo_pub_944_2013-chapter2.pdf
5. THE ECONOMICS OF TRADEMARKS
6. By Nicholas S. Economides*

One of the main factors that help the markets to be free for competitors and improve the competition level is that, exclude products that contain a functional character from trademark protection. To illustrate, “Functionality plays a vital role in maintaining competition within the trademark system by preventing the registration as trademarks of characteristics of goods that other traders need access to in order to compete”.There is no doubt that, there is a risk around that, without a functionality exclusions trademark registration might deliver exclusive right on products features which consumers value, or in how the product works. Moreover, technical shape products are excluded in order to protect the market from monopolise on a product technical solution to ensure that, competitors are able to have the “freedom technical choice” and consumers are likely to look for this characteristic in the products of competitors from offering the products with the same functional character. According to the ECJ, a sign is eligible to obtain a protection, if it is the main characteristic, not functional even if the product has some functional elements, because competitors are still free to use the product by removing the main non-functional elements and working around the functional. Generally speaking, it appears that, those exclusions product characteristic play an important role on competition.

As the importance of functionality features appears on enhancing the competition and keep the ability of consumers to distinguish goods far from confusion, hence the important of enforce the absolute ground for refusal at the first stage of registration. For example, obtain a trademark protection over a word “Orange” for fruits will monopolies the sign and that means other traders in the same field might affect when they use the same term. Therefore, the trademarks owner might file an infringement suit against those who use the same term which that might affect other traders and breach the nature of the market and competition. To illustrate, take other traders to a court might make traders avoid involving in trademarks field, hence that will damage the competition which is the principle of trademark. Consequently, the accused might receive an injunction that ask for stop using the mark, in some circumstances, a defendant will pay the attorney fee, the defendant might bear any financial losses, suffered by the plaintiff and the defendant’s profit, the claim proceedings are expensive and would reach to tens of thousands because each stage of the proceedings are cost several hundred of thousand whether references to the CJEU, Appeal stage or preliminary injunction, court have the right to decide how much will it cost but the main principle is, the loser pay the winners.

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1. Ibid
2. See art.4 Regulation 2017/1001 on the European Union trade mark [2017] OJ L154/1 (EUTMR).
3. Technical functionality in European trade mark law
4. Shapes with a technical function: an ever-expanding exclusion?
5. Antoon Quaedvlieg
6. Technical functionality in European trade mark law

Moreover, a defendant may be subject to confiscation or destruction of the disputed mark, these are “Preliminary relief” which is enforced when there is urgency in the interest of justice, or a party claim that their interest may harm, for example, saving their reputation.

The trademarks law has different approach, when it comes to the scope of protection. Therefore, obtain a protection over a product shape feature, will monopoly the technical feature regardless of the features deserve this protection and it may have a protection for a long time and might be extend. Therefore, such monopoly over the technical features might hinder and restrict the freedom of that field where technical features are important to the development and need a constantly evolving for innovations. In addition to this point, as discussed the difference between design rights and trademarks, trademarks law concerned with the determination of a sign to ensure that, the costumers can identify the goods what they are looking for without confusion. Evidently, the principle of Trademark law strong protection over a product is that, to promote the competition, develop the quality of products and ensures that consumers are able to distinguish “competing producers”. In other words, as a result of the strong protection and the impact on promote products, consumers will be confident, goods that having the same mark will be the same quality that they looking for.

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1. Trade mark litigation in the UK (England and Wales): overview by Susie Middlemiss and Laura Balfour, Slaughter and May
2. Trade mark litigation in the UK (England and Wales): overview by Susie Middlemiss and Laura Balfour, Slaughter and May
3. Kellogg’s Co. v. National Biscuit Co, Supreme Court (1938), 305 U.S. 111
4. AG Léger on Dyson v. Registrar of Trade Marks, para. 92.

Trademarks law and design rights both play a key role in the market due to the importance of enhancing the products reputation. The difference between these two approaches are evident in the way of granting a protection, the design rights only concerned about the novelty and individual character, while the trademarks system is concerned about creating a balance in the market to allow the traders to access the functionality of the product and working around it, and keep the consumers purchase decision safe from misleading. Both systems are concerned about morality and public policy, and both invest in the market development. On the other hand, it appears that, trademarks play an important role in competition. Although the registration of trademarks absolute ground for refusal might be a controversial area but the benefit from having a list of exclusion is valuable. These list of exclusion is valuable to develop the market by producing another products with high quality and enabling them to recognise the product that they are looking for, leaving the trademarks without examination at the first stage of registration, which will impact the traders by involving them in litigations, and increasing the number of the infringement cases that will harm the trademarks community and trader will avoid by using trademarks as they afraid from the damages resulting from litigation cost. Although the criteria of absolute ground for refusal valuable but it needs more interpretation in order to stop an increase the number of the infringement cases in courts.

Continue your journey with our comprehensive guide to Enforcing Patent Rights.

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1. The Function of a Shape as an Absolute Ground for Refusal
2. IS THE MONOPOLY THEORY OF TRADEMARKS ROBUST OR A BUST?
3. Harold R. Weinberg* (Park ‘N Fly, 469 U.S. at 193, 197-98. )
4. C. Fernández Novoa, J.M. Otero Lastres and M. Botana Agra, Manual de la propiedad industrial (Madrid-Barcelona, Marcial Pons, 2013), pp.506–509. ( Trade marks and freedom of expression in US and EU law
5. Dr Cristina Hernandez-Marti Pérez