You can use a three-dimensional trademark and a registered design to protect the shape or outside look if you have a physical product. Both types of protection have advantages and drawbacks.
The primary advantage of a registered design over a trademark is that there is less of a requirement to obtain registration. A design must be “novel” (new) and have “individual character” to be registrable. Novelty refers to the fact that neither the applicant nor any other party has previously published an identical design. Individual character indicates that each design must differ from any publicly available design in terms of how the knowledgeable user perceives it. Simply put, the design must be original and sufficiently different from other designs (or existing products) on the market.
As a result, if you’re considering registering a design, you should do it before the design is made public. Although not all nations have this “grace period,” it is still feasible to register a design in the EU within 12 months of its publication. The design should always be registered before it is made public.
In the EU, registering a design takes very little time. The uniqueness of individual characters needs to be examined in depth. Therefore, there is a shallow bar for registration.
A three-dimensional trademark must be distinctive to be able to be protected. The shape or form must differ significantly from industry norms or practices for the goods to be recognized by their shape. It is not sufficient if it is wholly novel. It is insufficient that the shape is new and that no one else is using it. Small changes from typical shapes for comparable products do not render the shape distinctive and capable of being protected as a trademark.
The significantly varied requirements for protection are the first obvious distinction. The uniqueness criterion for trademarks is relatively high. To be defendable, the shape must be eye-catching. Whether the shape is brand-new or not is unimportant. Long-term use of the shape might even improve the likelihood of trademark registration. Designs require a fresh shape that differs only slightly from what already exists. It can be somewhat stunning or dramatically different from what already exists. Therefore, the bar for trademark registration is significantly higher than it is for design registration.
The second distinction is that trademarks can only be used on the products and services listed in the application. Since the purpose of a trademark is to set one product apart from others that are similar, it is impossible to prevent someone from using a similar shape in a different industry. Design registrations safeguard the product’s form or appearance rather than its commercial origin. Therefore, design protection is not restricted to any specific products. If the shape is the same, a registered design can be utilized to prevent the use of an entirely different product. Since they are not restricted to the same and comparable products as trademarks are, designs are given broader protection.
While designs offer protection across all product categories, trademarks provide significantly more robust protection when the products being compared are similar or similar. Suppose there is a “likelihood of confusion” in the mind of the average consumer who cannot compare the products side by side and has only a hazy memory of the shapes. In that case, you can prevent the use and registration of another trademark (including a shape trademark) if it is a registered trademark. This demands that the shapes’ peculiarities stand out and be easily remembered. Different design comparisons are made. The extent of a design’s protection is that it leaves the same overall impression on a knowledgeable user. Two designs (shapes) are sufficiently different if, in the opinion of an informed user, they give off a distinct overall impression. The ability to discern between two designs is improved because an informed user (designs) is more perceptive and educated than the typical user (trademarks). As a result, in comparison to trademarks, designs have a more limited range of protection. As a result, the products may be confusingly similar when compared by trademark yet sufficiently different when compared by design.
The third distinction is the short lifespan of designs. They can last up to 25 years before expiring. When renewed every ten years, trademarks have no time limit on how long they are valid. For instance, The Coca-Cola Company’s US trademark registration No. 0022406 for the Coca-Cola (logo) is still in effect. It was recorded on January 31st, 1893.
So, taking all of this into account, what should you do?
Try registering it as a trademark if your product or packaging has a particularly eye-catching shape. The barrier to registration is high, but the security is also more robust. You should protect the shape as a design if it is fresh and distinctive but not highly eye-catching. Of course, it’s ideal if you can safeguard both the trademark and the design.