- The World of Applications: a Paradigm Shift
The introduction of smartphones represented, from the last decades, a disruptive event in the way we communicate. In this context, interface models that use icons to identify applications and different functionalities of such devices, regardless of their operating systems, became paradigmatic.
Distinctive icons, therefore, went on to serve as important tools to differentiate between rival applications and, for this reason, a growing trend to seek the protection of such signs through trademark registration has been observed.
This work, therefore, seeks to lead to the understanding of the importance of implementing a conscious protection strategy for application icons, addressing the essential concepts and assumptions in this regard.
- Device Mark vs. Composite Mark vs. Word Mark
Marks are intangible assets that, in many cases, represent by themselves considerable sums of the share capital of companies. Its primary purpose is to allow the distinction of identical, similar or related products or services that have different origins.
According to the Brazilian legislation, all visually noticeable, distinctive signs, not included in legal prohibitions, are eligible for registration. Other trademark legislations, such as the American, allow for the protection of sound or olfactory marks.
In Brazil, products and services marks must fall within the scope of four different categories, namely: word, device, composite or three-dimensional. Word marks are those composed of one or more words from the Roman alphabet, and may be associated to numerals, provided that verbally expressible and not associated to a design or logo. Device marks are those that consist of fanciful or figurative images, symbols, digits or numbers or that from different alphabets. Composite marks, in turn, consist of the combination of word and device elements. Three-dimensional marks are intended to protect the physical format of a specific product.
For the purpose of this study, we will consider in particular the device form, it being the most commonly employed to seek protection for signs that identify application icons. In this regard, a few examples of device marks for which protection was sought from the Brazilian National Institute of Industrial Property, in the context of trademark protection strategies for icons.
- The importance of the distinctiveness of the sign
A mark can incorporate several levels of strength, a characteristic that is directly proportional to its degree of distinctiveness. In this regard, the specialized literature stresses, as a rule, five different level of distinctiveness of a mark.
Generic marks are those that designate the very product or service they identify, which is a necessary designation that is closely tied to the nature of the product or service identified (The Computer Store, e.g.). Such marks are not liable to exclusive appropriation, under penalty of constituting monopoly of the use of expressions required to the segment in which the mark is inserted. Descriptive marks fall under a similar line, which, if does not describe specifically the products identified, use images, descriptors or periphrasis to do it (A Casa do Pão de Queijo, e.g.) .
Suggestive or evocative marks, in turn, are those that keep a connotative link to the products and services they seek to identify. They are marks that allude to characteristics or specificities of the goods and services designated, without directly describing them . Such signals may be registered as marks, but their holders must bear the cost of living with other similar marks, since the exclusivity granted is relative, given the reduced distinctiveness of the sign when associated to the products and services it identifies (Airbus, e.g.).
Arbitrary marks, in turn, are those that result from the use of words from the dictionary, but shifted from their regular meaning. That is, the meaning of the mark has not conceptual relationship with the products or services it seeks to designate (Apple, to designate computers, e.g.)
Lastly, there are fanciful marks, that consist of signs that have no intrinsic meaning. That is, they include no terms from the dictionary, but neologisms or verbal or figurative creations that have no relationship to the products and services identified.
Such concepts can be easily transported to device marks, where the greater the level of distinctiveness, the greater the distance between what the design adopted visually represents and the products and services identified (or, in this study, applications). Thus, as noted in Table 1 above, the sign used to identify the Snapchat application is much more distinctive than the one used for WhatsApp – being the granting of exclusivity for a sign that clearly adduces the functionality offered by the app even questionable.
Application icons must be equally subject to the trademark legislation and, thus, must be sufficiently distinctive, and must avoid icons overly simplistic or abstract, merely decorative or descriptive regarding the functionalities of the corresponding application.
Such differentiation strategies serve not only to ensure their prominence to consumers, but also to avoid potential dismissals by registration authorities, depending on the analysis criteria employed.
Since, as a rule, these are device marks (that is, not associated to a word element), the distinctiveness should be sought through design features, use of colors, of well-established signs associated to the offering company, among other strategies. It is recommended, for instance, to choose colors that are not usually associated to the segment in which the application is inserted (such as the use of yellow for taxi applications). Furthermore, the space restriction of the icon may lead to simplistic solutions, such as the use of the initial of the app’s name, which may generate a reduced scope of protection or even resistance regarding the granting of registration, particularly in the case of an isolated letter.
Another relevant concern should be regarding the availability of the sign for which protection is sought. In this regard, it is very important to not only assess potential conflicts with previous marks, but also the possible incidence of third parties’ copyright on the design, or even its potential identity with regulated symbols not liable to registration.
- The attractive power of the mark as realization of the investment
The marks, in their widest range of ways and degrees of distinctiveness, perform several roles, being the primary one the distinctive role already mentioned above. According to Gama Cerqueira, the mark would, therefore, be “every distinctive sign optionally attached to the products and articles in general to identify them and differentiate them from other identical or similar ones of different origin”.
In addition to such purpose, the mark is used to indicate the provenance, certifying to the consumer that the products and services identified by the same signal come from the same supplier, thus establishing a correlation between the economic agent and what it provides to the market .
The mark also plays a role to indicate or ensure quality, so as to safeguard the consumer from the exposure to products of different quality. It is not about high quality, but a consistent and established quality expected by the consumer .
There is also an economic role played by the mark regarding the safeguard of the effort and capital invested by its owner in the construction of a particular reputation, ensuring safety to the rights of traders and manufacturers over the result of their work .
And, lastly, the mark performs a paramount advertising role, in the sense of representing the most straightforward communication tool with the target audience at the disposal of its owner. Advertising is necessarily used to disclose, promote and disseminate products and services and does it through distinctive words or symbols, being the latter the marks . Thus, the mark performs an attractive role, endorsing a specific product or service and, thus, seeking to build a relationship of loyalty between itself and the consumer.
In the context of application icons, such roles have great relevance, being the signal that distinguishes an app often the main element that will make it stand out from other competitors. The appeal of an application icon is what allows the consumer to turn its attention thereto in the midst of a myriad of other options at their disposal. Application stores are like great department stores and, in this context, the power a packaging wields by attracting the consumer’s attention contributes greatly to the success or failure of a product.
Therefore, it is possible to conclude that such attractive power represents the realization of the mark’s economic role, insofar as it translates into the practical consequence of the effort to build a reputation around a sign
Such realization, however, is only possible through the adoption of a strategy to protect the mark and preserve its exclusivity and uniqueness. After all, the more exclusive and unique a trademark sign is in the market, the greater will be its potential to generate financial return and, therefore, the greater will be its intrinsic value. It is important to highlight that strong marks are, in many cases, the leading and most valuable asset of a company and the construction of such value starts necessarily with the adoption of an appropriate protection strategy.
Thus, seeking legal protection through registration of trademark, the sign that distinguishes an application from its competitors is the steppingstone of a successful strategy, and essential to internalize such concern in any business, but especially in the digital environment.
Written by Fernando Borges, Associate at Drummond Advisors, and Pedro Drummond, Partner at Drummond Advisors
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