How to deal with logos in design registrations
Many products will feature the manufacturer’s logo to clearly identify the product’s origins. Consequently, most design infringements will take the form of a counterfeit which reproduces the product exactly including the logo, or a lookalike which reproduces some or all of the shape of the product either without the logo or with an alternative logo.
So, if a design owner would like to enforce their registered design against both of these types of infringement, how should their logo be presented in the design drawings?
1. Omitting the logo
A first option is to omit the logo entirely. Apple Inc. uses this approach on its design registrations. An example figure from a design registration for a tablet computer is shown on the left below. The design drawing omits the prominent logo which is applied to all Apple products, as shown on the right below.
The main advantages of this approach are cost and efficiency savings because the requirements for disclaiming design features differ around the world. Omitting the logo entirely means that the same drawings can be used worldwide, avoiding the need for bespoke drawings for different countries.
On the other hand, a potential downside of omitting the logo entirely is that this enables a potential infringer to argue that the design is intended to claim ‘minimalism’, i.e. lack of decoration on the surface. If this argument were successful, then a copy which adds the infringer’s logo or other decoration to the ‘minimalist’ surface could avoid infringement. Apple made arguments of this type in a design dispute with Samsung, and the UK Supreme Court confirmed in their Trunki decision that minimalism could in principle be a feature of a registered design.
2. Disclaiming the logo
An alternative option to omitting the logo is to apply a so-called visual disclaimer to the logo. In practice, this often involves illustrating the logo in broken lines. An example of this practice is shown below, on Google’s “Nest” smoke alarm. The “Nest” logo in the centre of the product has been visually disclaimed using broken lines in the left-hand design drawing, with the product shown on the right.
Disclaiming the logo by definition excludes the logo from the scope of protection, so the registration should cover a ‘minimalist’ design with no logo. Showing a disclaimed logo also implies that adornments other than the logo could be present; this should make it difficult for a potential infringer to successfully argue that the registration only covers ‘minimalist’ products without a logo. Therefore, a design registration with the logo disclaimed should confer protection against both counterfeits which include the logo, and lookalikes which feature no logo or an alternative logo.
If a disclaimer is used, specific local advice should be sought to ensure the disclaimer is applied correctly in view of the differing rules around the world. This process can be quite onerous and expensive if the design is to be registered in a large number of jurisdictions, which is presumably why some large multinationals, such as Apple, seem to prefer omitting their logos entirely rather than engaging with the intricacies of disclaimers around the world.
3. Claiming the logo
If the logo is shown in the design drawings in solid lines, it will be actively claimed as part of the design. Therefore, it is possible that an otherwise identical product which omits or changes the logo could avoid infringing the registration. Therefore, for most products, it is inadvisable to claim a logo.
However, some products may feature a logo as an intrinsic and important part of the design which it would be appropriate to claim. For example, the Adidas “Three Stripes” logo is deeply incorporated into the overall impression of their “Superstar” trainer, shown below. Had Adidas been registering the design for this shoe, it might have been appropriate to claim the three stripes as part of the design.
4. File multiple versions
The most comprehensive approach would be to register all three of the above options. This might not be as expensive as you would think; in the UK and Europe at least, all three options could be filed in the same application, with the second and subsequent designs attracting significantly reduced fees.
Conclusions
The best approach for registering the design of products with a prominent logo will depend upon the specifics of the product design, and the owner’s IP strategy and budget. HLK’s Designs Group have significant experience in advising on designs strategy and will be able to suggest the right approach in view of your particular product and business aims.
It is generally preferable to file an application to register a design before the design is disclosed, so get in contact with us early in the product design process to give your applications the best chance of success.
