A Shape Trademark vs Registered Design

Before we start, let’s define what each of these are…

Shape Trade Mark

If you have a unique and distinctive shape that is synonymous (or is capable of becoming synonymous) with your product or service, then it is likely capable of functioning as a trade mark. An example is a Toblerone chocolate bar. The shape of that bar is stereotypically known for its “Toblerone shape”.

Registered Design

This is the overall appearance of a new product. It could be a shape, pattern or ornamentation. Examples include fitness equipment that have new looks, shapes and configurations.

Getting Protection

A valid registered design needs to be new, meaning you can’t disclose it, you can’t promote it and you can’t tell anybody about it before filing a design application. If you disclose your new design to anybody before a design application is filed with IP Australia, you will lose the ability of obtaining valid design protection.

A trade mark does not have a newness requirement. If you have been using the shape in the marketplace for some time, the earlier promotions or disclosures will not prevent you getting a valid trade mark registration. This being said, the shape needs to be distinctive to your product and must be capable of distinguishing the product or service from everybody else’s similar shapes in the marketplace.

How long does protection last?

Australian registered designs have a maximum life span of 10 years. They can be renewed once on the 5th year anniversary for a further 5 years. Once 10 years is up, your design is out in the public domain for anybody to use and copy your design.

Australian trade marks can effectively last forever. Renewal fees need to be paid every 10 years, so as long as renewal payments are made and you keep using the name, logo or shape, your trade mark can last forever.

One of the main benefits of a registered trade mark over a registered design is you have the exclusive right to that name, logo or shape, potentially forever!

Some businesses will incorporate both protection types into their overall strategies. For example, you may register a design initially and as you near the end of its lifespan, consider filing to protect further as a ‘shape trademark’ to continue protection.

How do you decide whether you need design or trade mark protection?

First of all, you should get professional advice before proceeding with either a design or trade mark application. Mark My Words Trademarks Services will be able to give you expert advice on your best course of action.

If your product has already been disclosed to the public, you are not going to get a valid design. Your attorney would then look at whether or not a shape trade mark would be a viable option to obtain some protection.

If the product has not been disclosed and your product is new and distinctive, it might be worthwhile getting design protection which will protect you for 10 years. As you near the end of the 10 years, it might be worthwhile filing a shape trade mark to ensure you continue with protection.

Sometimes shapes don’t initially make the threshold for trade marks in terms of the capacity to distinguish the product or service so a design registration is preferable. If you have design protection for 10 years, and you then file for trade mark registration, if any obstacles need to be overcome during the process, you may be in a better position to overcome them by being able to demonstrate 10 years of use and that the shape is distinguishing your product in the marketplace.

Let us help you

For total peace of mind and to ensure you get the right protection from the start, it is advisable that you talk to Mark My Words Trademark Services. We can provide you with competitive estimates and expert advice on ensuring you have the right protection in Australia, New Zealand or any other country. Initial consultations are free of charge, so if you are unsure whether your new product may be protected via design registration or as a shape trademark contact us for a no fee and no obligation consultation.

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