When all else fails – why design rights may be the ‘underdog’ of brand protection 

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The rise and fall of “evergreen” trade marks

Last year, we reported on the high-profile General Court decision in the MONOPOLY case (Hasbro, Inc. v EUIPO - T-663/19) where it was held that Hasbro had acted in bad faith in its re-filing of trade mark applications, given one of its motivations was to avoid its marks becoming subject to the requirement to file evidence of use in the context of opposition proceedings.

This decision calls into question the validity of trade mark registrations which have been “evergreened”, a widespread practice by many trade mark owners who routinely file fresh applications for their trade marks, to avoid having to rely on registrations that are more than 5 years old and therefore vulnerable to revocation on the grounds of non-use. New filings for marks that have been previously registered are likely to come under ever closer scrutiny by trade mark examiners and will be increasingly susceptible to cancellation attacks.

The GC decision in Hasbro is likely to make it more challenging for brand owners to secure and maintain broad protection for their trade marks, particularly in respect of goods/service where they may struggle to prove “use”. Although the Hasbro case concerned a word mark, registrations for logos and shape marks will face the same “evergreening” challenges. Whilst there may be more scope for brand owners to periodically update their logos or product shapes and legitimately re-file them, a 5-yearly rebrand is unlikely to be commercially viable, particularly in the case of shape marks which are more likely to require evidence of acquired distinctiveness to be registrable. Moreover, attempts to make ‘token’ alterations to a logo or a shape mark primarily for the purposes of re-filing may – subject to the evidence - fall foul of bad faith principles.

Design registrations, on the other hand, are not subject to a “use” requirement, whether at the point of filing or at any time thereafter. Registered designs can happily and validly sit on the design register for up to 25 years without ever falling susceptible to revocation for non-use, or cancellation on “bad faith” grounds*. Despite its limited life span, a design registration can therefore provide valuable back-up protection for logos and shapes whose trade mark status may be open to challenge as early as 5 years from grant.

On logos, shapes and caterpillars

The social media spat (and recently settled litigation) between Aldi and Marks & Spencer relating to Colin the Caterpillar provides an example of a trade mark registration for a shape mark being relied on to challenge a lookalike product. Parties reportedly reached a “confidential agreement” on 5 November 2021 but whilst the case will not now be heard in court, it still serves as a useful illustration of the extra layer of protection that design rights could potentially add in similar cases in the future.

M&S relied on UK Trademark 3509740, registered with effect from 8 July 2020. Whilst not vulnerable, it comprises only part of the shape of the Colin the Caterpillar cake (it does not show Colin’s chocolate-buttoned face) and also covers its external packaging – including the text ‘M&S COLIN THE CATERPILLAR’. Notably, M&S does not appear to hold a shape mark registration for Colin’s shape alone – possibly because such a registration would have required robust evidence of acquired distinctiveness.

Another benefit of design registration is that the requirement of “novelty” and “individual character” present a lower bar than trade mark “distinctiveness”. Therefore, shapes that might not be registrable as trade marks could still be registrable as UK or EU designs, provided they are filed within 12 months of first disclosure. In Colin’s case, the proverbial ship has sailed on design protection as the product was reportedly launched more than 30 years ago. However, savvy brand owners launching new products or logos can look to designs to ‘plug the gaps’ where trade mark protection is not readily available.

In its pleading, M&S also relied on passing off, citing its “very significant goodwill” in claiming that Aldi’s chosen name Cuthbert the Caterpillar and/or its get-up and packaging misrepresents to customers that it is an M&S product, or that it is connected to M&S. As IP practitioners and many brand owners will be acutely aware, the tort of passing off is notoriously difficult and expensive to establish and may not be a realistic option for newer products that do not have the benefit of Colin’s long trading history. Once again, a design registration can provide a powerful alternative to protect logo marks and product shapes, without the need to establish ‘goodwill’ or actionable ‘misrepresentation’. It is sufficient that the design is new and has individual character – and infringement can be established merely by similarity in overall appearance, regardless of any confusion by the public.

The recent Oh Polly case (reported here) aptly demonstrates where rightsholders might seek to rely on design rights when alternative actions fail to take off. Despite the court recognising that the defendant in that case had deliberately sought to “ride on the coat-tails” of the claimant’s successful business, it rejected the passing off claim given the lack of evidence of misrepresentation and confusion. The design case, on the other hand, succeeded based on the similarity of the garments, despite the lack of confusion. In the absence of design rights, many similar claims against deliberate copycats and lookalikes would likely fail.

Importantly, design registrations can be enforced against copycats from day one of a brand or product launch, without having to build up goodwill or distinctive character through several years of trade. This could be critical for securing a ‘first mover’ advantage and preventing lookalikes from flooding the market in the interim.

Designs to the rescue – a selective saviour

To re-cap on their many benefits, design registrations:

  • have no “use” requirement and are not subject to cancellation on the grounds of bad faith*;
  • do not need to be ‘distinctive’ in the trade mark sense of indicating origin;
  • are not subject to substantive examination at the time of filing*, and are relatively quick and inexpensive to register;
  • are not limited to a specific product class but, once registered, will be protected in relation to all products (including where the registered design is a logo or graphic symbol); and
  • do not require proof of goodwill, confusion or copying to be infringed, as long as the infringing product produces the same ‘overall impression’ on the informed user (which in the case of close lookalikes or copycats should be easy to establish).

Naturally, designs will not provide a substitute for trade marks and passing off in all cases. The main limitations are that they will only serve to protect logos and shape marks (not word marks) and that they must be new – or be within the 12 month “grace” period – at the time of filing. Another notable downside is their maximum duration of 25 years, whereas trade marks and goodwill could provide indefinite protection, if duly renewed. Designs have their own “evergreening” challenge in that, once expired, they cannot be re-filed in the same or substantially similar form, as this would lack “novelty” and/or “individual character”. However, a quarter-century term of protection will be more than enough for many logo and shape marks which will likely evolve over time.

Another drawback is that a design registration alone does not provide grounds for a trade mark opposition. However, in some cases it may be possible to rely on unregistered trade mark rights and/or copyright (particularly in logo marks) instead. Moreover, the threat of a design infringement claim might be sufficient to deter an applicant from pursuing an application for an identical or highly similar trade mark, particularly alongside an opposition based on other grounds.

Registered designs therefore provide an additional or alternative remedy to logos and shape marks, including where the original trade mark is vulnerable to non-use and/or a subsequent re-filing is at risk of a bad faith cancellation, and where a passing off claim is likely to present a challenge. In the context of litigation, defendants may be less inclined to attack a claimant’s mature trade mark registration if the claim doesn’t depend solely on a single earlier trade mark but is coupled with a registered design infringement claim. Brand owners should have design rights firmly in mind when formulating brand protection strategies and planning new product launches, particularly where the product or logo is expected to have longevity and likely to be a target for copycats.

*Please note that the UKIPO has recently proposed changes to these positions in connection with its Call for Views. For further information on the Call for Views, please click here.

For more information on this topic, please contact Kaisa Patsalides or Lucinda Richardson.