14 November 2008
By Jane Coyle
It is possible to obtain both forms of protection.
A Community design will be protected if it meets the legal requirements of novelty and individual character at the time of filing. The protection granted by a Community design extends to the shape, lines, and contours of a product to which it is incorporated or applied. A 3D CTM will be granted if the product can be considered as a sign which distinguishes the applicant’s goods from those of anyone in a similar business.
The protection granted by a Community trade mark is related to the distinctiveness of the sign itself compared to identical reproductions and signs with visual, phonetic or conceptual similarities leading to a likelihood of confusion.
It is possible for example to protect packaging as both a CTM and RCD if they meet the corresponding legal requirements: a novel shape becomes synonymous with a company’s goods and may then be registered as a trade mark as well as being protected by a Community design on the grounds of its individual character and novelty.
What is the difference between the protection offered by a 3D mark and that offered by a design?
Registration as a three dimensional trade mark protects the distinctiveness of the sign compared to the other existing signs in use for the same products or services, whereas a design protects the novelty and the individual character of a product.
A new or very unusual or original shape will not be registered as a CTM if it does not comply with the condition of being distinctive as regards the products or services which have been applied for. A product with a design that has been marketed for years before the application for registration will be registered but could be invalidated by any interested third party because of its lack of novelty.
The characteristic of novelty does not apply to trade marks and the characteristic of distinctiveness does not apply to designs.
A trade mark has no time limit (it can be renewed indefinitely for periods of ten years) whereas a registered Community design has a maximum of 25 years’ duration from the date of application for registration.