The IP Trifecta: Using Trademark, Copyright, and Design Rights Together to Protect Products

Companies should also consider applying for an EU Trade Mark (EUTM) covering the product’s shape. However, such marks are sometimes difficult to register. The shape must depart significantly from the standards or customs of the relevant sector to be considered capable of acting as an indicator of origin. One example of a registered 3D mark is the COCA-COLA bottle:

EUTM No. 10 532 653.

Many other well-known shapes have been denied trademark protection in the EU. One such example is Tecnica’s famous MOON BOOTS, which were refused registration:

Tecnica v. European Union Intellectual Property Office, Case T-483/20

While one cannot register a copyright under EU law, the Court of Justice of the European Union (CJEU) has already decided that copyright can also protect the design of a product and that such works of applied art are to be treated like any other copyrightable work. See Cofemel, C-683/17. Copyright protection as an alternative or complement to design protection has since become increasingly attractive.

However, the requirements for copyright protection are different from those for design protection. To be eligible for copyright protection, a work must be the expression of a “free creative decision” of its author and reflect the author’s personality. It remains to be seen how this standard will be assessed in the EU. This will be the subject of forthcoming rulings in two pending CJEU cases (USM Haller, C-580/23, and Mio, C-795/23). Companies should ensure that they keep careful records of the authors responsible for designs, and the process of creation, as this evidence could be crucial in claiming copyright protection.

The IP trifecta strategy is a very effective means of protecting product designs in the EU, and an applicant will benefit from the different scope of protection offered by design rights, trademarks, and copyright.

European Perspective Outside the EU

In Azerbaijan, Kazakhstan, Ukraine, and Uzbekistan, companies can indeed benefit from a triple protection approach using trademarks, design patents (industrial designs), and copyright.

This strategy broadens enforcement options and strengthens a company’s IP portfolio by covering multiple aspects of a product’s appearance and uniqueness.

Triple Protection: Benefits and Challenges

Each right serves a distinct purpose:

• Copyright protects creative expression;
• Design patents relate to a product’s appearance; and
• Trademarks distinguish goods/services by their source.

All four jurisdictions mentioned above have similar IP laws, though some of the registration procedures and terms of protection differ. Trademarks last for 10 years and are renewable, copyright lasts for the author’s lifetime plus 70 years, and protection for design patents varies from 15 years (Azerbaijan and Uzbekistan) to 25 years (Kazakhstan and Ukraine). Copyright protection is automatic once the work is created in each country, and registration is optional. However, registration is recommended, as it helps confirm the work’s creation date, provides added evidence, and facilitates potential enforcement.

All these jurisdictions agree that there is no conflict if the trademark, design patent, and/or copyright belong to the same person or entity. However, when different parties own the rights, Azerbaijan, Kazakhstan, and Ukraine overcome the conflict by providing a Letter of Consent from a holder of prior rights. Uzbekistan also allows a trademark containing copyrighted material to be registered with the copyright owner’s written consent, but the same flexibility does not extend to industrial designs. One cannot register a trademark incorporating a protected industrial design, even if the owner of the prior industrial design consents.

Examples of Multiple Protection

Examples of how the IP trifecta is applied include the following:

• The CHANEL handbag shown below is protected in Ukraine, both as an industrial design and as a trademark:

International Design No. DM/202946 in Ukraine (also designated in Azerbaijan).	Ukraine Trademark UA TM No. 304967.

• The graphic design of Phillip Morris shown below is protected in Kazakhstan and Ukraine, both as an industrial design and as a trademark:

International Design No. DM/213 505 in Ukraine. Industrial Design No. 3492 in Kazakhstan.	Kazakhstan Trademark UA TM No. 74121. Ukraine Trademark UA TM No. 321451.

• The bottle design for NEMIROFF vodka shown below is protected in Azerbaijan and Ukraine, both as an industrial design and as a trademark:

International Design No. DM/075 742 in Ukraine and Azerbaijan.	International Trademark Reg. No. 1100885, protected in Azerbaijan and Ukraine.

The U.S. IP Trifecta

Product designs in the United States can be protected under theories of design patent, copyright, and trademark protection. The U.S. design patent system is an offshoot of the utility patent system. To obtain a U.S. design patent, the design must be novel and non-obvious. Additionally, the design must be ornamental, which means, among other things, that it cannot be dictated by utilitarian function. U.S. copyright law protects original works of authorship. Works that are “useful articles” cannot be protected under U.S. copyright law. The U.S. trademark system protects designs used as a source identifier. There are numerous product designs registered at the U.S. Patent and Trademark Office, including the COCA-COLA bottle and the TIFFANY blue box.

Many companies use the IP trifecta to protect their most important and source-identifying products. For example, the LEGO Group obtained a design patent, trademark registration, and copyright registration for its toy figurine:

U.S. Pat. No. D253,711 (now expired).	U.S. TM Reg. 4903968.	U.S. Copyright Reg. VA0000655104.

As another example, Apple asserted both design patent and trade dress claims related to the iPhone and iPhone 3G against Samsung’s GALAXY products in the U.S. District Court. See Apple, Inc. v. Samsung Elecs. Co., 2013 U.S. Dist. LEXIS 13238 (N.D. Cal. Jan. 29, 2013) (jury found that Apple’s registered and unregistered trade dress was protectable and diluted, and that Apple’s design patents were valid and infringed). While the trade dress claims were later invalidated on appeal to the Federal Circuit, the design patent claims survived. See Apple Inc. v. Samsung Electronics Co., Ltd., 786 F.3d 983 (Fed. Cir. 2015); compare Lanard Toys Ltd. v. Dolgencorp LLC, 958 F.3d 1337 (Fed. Cir. 2020) (finding that the trade dress of a chalk holder made to look like a #2 pencil was not infringed by a product with a similar design, despite the existence of a design patent and a copyright registration).

The key to an IP trifecta is to begin with U.S. design patent protection. An application for a U.S. design patent cannot be filed more than one year after a public disclosure of the design, and other jurisdictions like China require “absolute novelty” (that is, no public disclosures before filing). So, when someone develops a new design, that person should file the design patent application before any public disclosure of the design.

U.S. design patents typically issue within 20 months of the application filing date. Design patents have a 15-year term of protection, and this protection can serve as a stopgap until trade dress rights accumulate. (The U.S. Supreme Court has stated that product configuration can never be inherently distinctive, making this stopgap particularly important for product designs.) After filing a design patent application, an IP owner should consider filing one or more U.S. copyright applications covering the design. A copyright registration will typically issue in a matter of months after filing. This registration provides the design owner with interim protection until the design patent application is examined and issued. It also provides a right to sue in U.S. District Court and a presumption of copyright validity of the design. Copyright protection may be especially valuable where design patents and/or trade dress applications are still pending, or where there is insufficient evidence of inherent or acquired distinctiveness to support trade dress protection.The last step in the process is filing a U.S. trademark application to protect the design. If the product design may be characterized as “inherently distinctive,” such as is the case with product packaging (as opposed to product configuration), it is possible to file a trademark application simultaneously with the design patent and copyright application filings. But if the design is a product configuration, which as stated above can never be inherently distinctive, then obtaining a traditional trademark registration may not be immediately possible. Instead, the applicant could seek protection on the Supplemental Register (which still yields some but not all of the rights associated with a traditional trademark registration), or else wait until the requisite acquired distinctiveness has been achieved. Under U.S. trademark law, five years of substantially exclusive and continuous use of a design in commerce will constitute prima facie evidence of acquired distinctiveness.

As the above illustrates, implementing an IP trifecta strategy can be extremely effective in protecting designs in the United States.

Optimal Strategy for Triple Protection

To optimize protection, brand owners should follow a structured, step-by-step approach. Because of strict novelty and originality requirements, securing design patent (industrial design) protection should be the first priority. Next, trademarks should be registered. At the same time, it is highly recommended that all rights be held by the same entity to avoid potential conflicts, particularly in Uzbekistan. Finally, copyright registration is optional but still recommended for additional legal backing, with authors transferring monetary rights to the same entity holding the design and trademark rights.

This strategy, though complex, forms a robust multi-level barrier against infringement, helping companies maintain product integrity. Such a strategy can effectively guard against imitation and/or unauthorized use.

Although every effort has been made to verify the accuracy of this article, readers are urged to check independently on matters of specific concern or interest. The opinions expressed in this feature are that of the author and do not purport to reflect the views of INTA or its members.

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