Design and trade mark rights can complement each other by giving a product an additional layer of protection.

Design protection is not restricted to the type of product

What designs have, that trade marks don’t, is a more flexible classification system. What that means is that a registration, for example, for the design of LEGO building blocks under ‘toys and games’ will also cover the same LEGO blocks when made out of chocolate, sold on the market under ‘foods and confectioneries’. So long as the design is the samethe form in which it is delivered is irrelevant. 

A trade mark differentiates in that it is protected only in respect of the specific field(s) within which it is registered. Would the LEGO brand have thought it necessary to register their building blocks for confectionaries? Not necessarily. Even if they did, there would be other classes where possible infringement may occur. This is where design protection is at its most useful form. It is a source of protection for unforeseen infringements, strengthening weaknesses of not only trade mark rights, but also other intellectual property rights concerning copyright and patents.

Protecting a product’s overall appearance

The overall appearance of a product, also known as the get-up of the product, is a subject for both trade mark and design protection. Obtaining a design right tends to be the cheaper, quicker and relatively easier option. This is so because three dimensional trade marks, like Toblerone’s triangular shaped chocolates, are increasingly difficult to obtain and, whilst a trade mark can protect individual aspects of a product or its packaging, like slogans, logo designs or colours, it is not capable of protecting the overall impression that the individual elements achieve when placed together. A design right therefore can facilitate the protection of the overall look of products that find their mirror-like reflection on the other side of the supermarket aisle. Exemplary of this is the design infringement action raised by Moroccan Oil against Aldi’s lookalike product, Miracle Oil.

A further perk is that design rights do not depend on whether the design is put to use or not. Trade marks, on the other hand, have a ‘non-use’ cancellation period of, typically, 3 to 5 years.

When is the combination of trade mark and design protection at its best?

Design rights can exist as an automatic form of protection, for 15 years from creation, until a product gains momentum and acquires public recognition. The Coca Cola glass bottle at first had a new and original design, which called for a design right. Its subsequent recognition by consumers as an identifying shape for the Coca Cola brand, made the bottle design eligible for registration as a three dimensional trade mark.

In current market conditions brands take less risks and tend to opt for registering a combination of design and trade mark rights from the very start. That way they can enforce their trade mark rights over words and logos relating to the product and design rights over the overall configuration of the product, and its packaging.