What is difference between “Trademark Registration” and “Design Registration” ?　We can help you with both!

Trademark Registration? or Design Registration?

I’ve been trying to come up with a product name for a new product we’ve developed at our company. I have a feeling it will be a hit because of the great name and product design. I don’t want anyone else to copy it.

The better something is, the more likely it is to be copied.
Then you should proceed with your trademark application as soon as possible.

Naming of a product is a trademark registration, but a product design is a trademark? Isn’t it a design registration?

Trademark registration and design registration

When you think of “trademarks,” you first think of brand logos and product names.
When you think of a “design,” you probably think of a product design.

Both trademark and design rights are intellectual property rights that are obtained by filing an application with the Japan Patent Office and undergoing an examination.

Trademark and design rights are closely related, and it is important to know about both rights in order to run a successful business.

This article explains why both trademark and design registration are important.

Trademark Registration

A trademark is a mark, comprising of, for example, letters or graphics, that appears on a product or other item to distinguish your product or service from those of other companies.

The system is established to maintain the credibility by the use of a trademark and to protect the interests of consumers so that they do not confuse the product of the trademark with another product.

Design Registration

A design registration covers the design of a creative work and protects an original industrial design.

The purpose of this system is to allow the exclusive manufacture and sale of industrial products with unique designs and to prevent imitation or similar products by other companies.

Which to choose, trademark or design registration?

Trademark registration and design registration differ in the following points.

Difference in subject matter of rights

The biggest difference is the subject matter of the rights under the Trademark Law and the Design Law.

The Trademark Law protects “marks” that are used to distinguish the goods or services offered by the company from those of others. They are used on the designated goods or services provided by the company.

On the other hand, the Design Law protects the design of industrial products.
It is an exclusive right granted to a new industrial design, such as the shape, pattern, or color of an article.

3D Trademarks

Generally, a trademark registration protects a brand logo or a product name, so we imagine a flat design. The trademark also includes 3D trademarks of three-dimensional shapes.

Famous examples of 3D trademark registrations are Peco-chan doll of Fujiya Company and the doll of Carnell Sanders of Kentucky Fried Chicken.

The elements required for a trademark are “the function of indicating the origin of goods” and “the function of distinguishing one’s goods from others.
A mark is not recognized as a trademark unless it is immediately recognizable as the product of the company and distinguishable from the products of other companies.

Therefore, as a 3D trademark, if the shape itself is commonplace, the registration will not be allowed.

However, even if the shape itself does not have enough distinguishing power to be registered as a trademark when the product is first launched, it may be registered as a trademark if the same shape has been used for many years and consumers can recognize the product by looking at the shape (source identification).

Difference in Costs

・Filing fees with the Japan Patent Office
　Application for trademark registration: 12,000 yen (for an application in one class)
　Application for design registration: 16,000 yen

・Registration fee with the Jpan Patent Office
　Trademark registration 32,900 yen (for a registration in one class)
　Design registration 8,500 yen (from 1 to 3 years), 16,900 yen (from 4 to 25 years)

Regarding registration of trademarks, a registration fee is paid at the time of registration and the right period of 10 years is obtained, while for design registration, a registration fee is paid for each period for which the right is to continue, and the right expires when the payment of the registration fee is discontinued.

If you request a patent attorney or patent firm to handle the procedure, the fees paid to the patent attorney or patent firm are generally lower for trademark applications than for design applications.

Difference in term of right

Trademarks have a right term of 10 years after registration, but can be renewed as many times as necessary, so they have the advantage of semi-permanent rights and a long term of protection. By continuing to use the trademark for many years, a company can accumulate credibility.

In contrast, the term of a design right is set at a maximum of 25 years from the filing date of the design application.
(20 years from the registration date until March 2020, and 15 years from the registration date until March 2007).
Once the right expires, in principle, anyone can use the design.

Combination of trademark and design registration

Both trademark and design rights exclude imitation by others similar to the right and allow one’s own exclusive use.
However, the criteria for determining similarity and dissimilarity differ between trademark and design rights.

There are a variety of possible situations in which imitations may be found to be dissimilar under the trademark practices, but similar under the design practices, or vice versa.

In order to be prepared for such a situation, obtaining both trademark and design registration rights will help eliminate counterfeit products from all directions.

It is also conceivable to first file an application for a design and then obtain a trademark registration for a 3D trademark after the product becomes successful.

As mentioned above, the design system requires that the product design itself be new (original) in order to be registered, but does not require “distinctiveness” like a trademark.

Therefore, if a product has a design shape that is difficult to distinguish, it can be registered as a design, which is easier to register, and then registered as a three-dimensional trademark after it has acquired distinctiveness through use of the product.

Since trademark rights are semi-permanent, the product shape can be protected from imitation by other companies even after the expiration of the design right.

Case examples

The following are examples of cases where both trademark and design registration rights have been obtained.

Both trademark and design were registered for the shape of product itself.

＊”Birkin” by Hermes is a famous luxury bag.
Hermes has the right of Trademark Registration of “Birkin” as a character trademark (Trademark Registration No. 4384061).
In addition, the shape of the bag itself is also registered as a 3D trademark.
Hermes has successfully enforced the trademark right of this three-dimensional trademark to stop the import and sale of similar products.

Both trademark and design were registered for packaging container of product

Product sales are greatly affected by the naming and packaging design of a product.
Since naming and package design play an important role in conveying the value and attractiveness of a product, they should be considered crucially as the development of the product itself.

By registering the product’s name as a trademark and the package as a design when the new product goes on the market, you can protect your valuable products from clever imitations that can slip through the legal net.

＊The design right of the perfume bottle has expired due to the expiration of its duration, but the trademark right has been renewed and is still in force.

＊In this case, the product name “LACTDEW” is a registered trademark (character trademark: Trademark Registration No. 5063479) and the packaging is a registered design.

It seems tthat if a trademark and design registration rights are combined, the damage from imitation will be much reduced.

Summary

There are a variety of options for obtaining rights for any part of a product, even for a single product, and careful consideration is necessary to ensure smooth business operations

Furthermore, in addition to trademark and design registrations, it is also possible to obtain rights to the technical features of the product as patent rights.

The “IP-mix” strategy, in which multiple types of intellectual property rights (patent rights, design rights, trademark rights, copyrights, etc.) are combined to protect a product from multiple aspects and increase its competitiveness. This produces a synergistic effect of these rights by utilizing the advantages of each right to provide comprehensive protection for the product.

We are an all-round IP firm that handles not only trademark registrations but also numerous patent and design cases.

If you are considering obtaining design or patent rights in addition to trademark registration, please feel free to contact us using Request Form. Our patent attorneys specializing in various fields will help you protect your business in the most appropriate way.