3 Benefits of Combining Design and Trade Mark Protection
Emily Young
Depending on the nature of your business, you may be seeking multiple forms of intellectual property (IP) protection. If you have a unique product that you have designed, this can include design rights. This article will take you through the differences and overlap of trade marks and design rights, as well as three benefits of combining the two.
What is a Trade Mark?
A trade mark is a common form of brand protection. A trade mark over your brand assets will distinguish your goods and services from your competitors and provide avenues to enforce your trade mark rights against infringement. Most common forms of trade marks include a:
- word;
- phrase;
- image or logo;
- any combination of the above.
Overall, any asset of your brand that you can distinguish from others can be a trade mark.
What is a Design?
A design right is a different form of IP protection that protects the overall appearance of your design. This relates to products that are both new and distinctive and may be a combination of visual features, including:
- shape;
- colour;
- ornamentation; or
- pattern.
However, design rights do not protect everything associated with your design. For example, design rights will not protect:
- a concept;
- materials;
- branding of your design;
- changes to the appearance of your design over time.
The overlap between design and branding is large, making it common for those with design protection to also seek trade mark protection.
3 Benefits of Combining Design with Trade Mark Protection
The key difference between the types of protection is that trade mark protection seeks to distinguish your brand from others, while design rights are used to encourage the development of novel designs. This means that there is often an overlap between the two that can have several benefits (see below).
1. Strong Trade Mark Application
Being eligible for design protection means that your trade mark will be inherently stronger. Design protection requires your design to be innovative, which in turn can contribute to the corresponding trade mark being distinctive. Further, designs must be new and distinctive and not already exist in the marketplace, which may also impact your brand elements. Having a strong trade mark makes the trade mark application process easier and more streamlined.
2. Additional Protection
Having both trade mark protection and design protection means that your rights over your product are increased automatically. The process of design protection requires both registration and certification. After completing both processes, certification will give you the legal right to take action against others using your design and the right to license and sell your design.
While these rights are comprehensive, they only last for a maximum of 15 years, after which time you will no longer have exclusive use of the design. On the other hand, trade mark rights are renewable for 10 year periods with no maximum renewal times. This means that, even if you no longer have the exclusive use of your design, you can retain the exclusive rights to the associated branding.
3. More Enforcement Options
The combination of protection increases your options to stop infringement. Design rights give you exclusive rights to the use and commercialisation of your design, while trade mark rights give you exclusive rights to the use of your brand elements. The combination of these two provides an excellent foundation to prevent infringement of your design.
Other Considerations
When determining if you should seek design rights, a trade mark or both, there are some key questions you should ask yourself. For example:
| Is my design distinctive? | If you are uncertain if your design is distinctive enough to warrant design protection, trade mark protection may be sufficient by itself. |
| Is there a lot of competition? | If your design has a lot of competition due to its nature, it may be essential to have both trade mark and design protection to provide the most comprehensive protection and prevent infringement. |
| What is the commercial life expectancy of my design? | If you expect your design to have a relatively short commercial life span (for example, if it is a limited edition and you have no intention to produce it on a large scale), trade mark protection may be unnecessary. |
Key Takeaways
Combining design with trade mark protection can have several benefits. This includes having:
- a stronger trade mark application;
- additional protection; and
- more enforcement options.
If you need help registering your trade mark or design rights, get in touch with our experienced trade mark lawyers. You can contact them on 1300 657 423 or by filling out the form on this page.
Frequently Asked Questions
A design right is a different form of protection that protects the overall appearance of your design. This relates to both new and distinctive products and may be a combination of visual features, including your design’s shape, colour, ornamentation, and pattern.
The key difference is that trade mark protection seeks to distinguish your brand from others. In contrast, design rights encourage the development of novel designs.