Article written by Attorney-at-law Christoffer Lindhardt Larsen.
In many situations, the app icon will represent the first time a consumer meets a company’s brand. Just think about the social media or streaming services you probably use. A company’s icon is synonymous with its brand, its services and the company itself.
When designing an app icon, you may need to change the logo or even make an entirely new logo to fit the format. In this process, you risk changing your company’s original trademark to something which is entirely different to the mark you may have protected or used hitherto.
This involves a risk that an unprotected trademark is used in the company’s most prominent marketing efforts.
Worse still, the company may be using a trademark which cannot be protected. In the first example, where the company has not protected its app icon, the risk may be averted through proper trademark registration. In the second example, however, where the trademark cannot be protected, the situation is entirely different.
The reason for this may be – and often is – that an icon that fits the format is not suited as a trademark. It may be descriptive, too simple or purely decorative, for example.
Prevent your app icon from diluting your trademark protection
In many countries, companies are required by law to provide evidence that they actually use a registered trademark after a number of years. If a company is unable to provide evidence of use, it risks losing the right if a third party claims that the mark has not been used. For Danish and European trademarks, the use requirement is triggered after five years.
Thus, if you have – or are in the process of developing – an app, you should be aware of the risk that the final design of the app icon may lead to dilution of your company's existing rights and position in the market. By using the app icon instead of the company’s registered trademarks, the company risks being unable to provide evidence of current use of its rights.
What should you do if you have developed an app?
We recommend that companies that have launched or are in the process of developing an app, arrange for an assessment of whether the app icon constitutes an independent trademark in respect of which the company should apply for registration in order to secure its rights.
If the app icon is an independent trademark, the company should consider whether to file an application for the mark in relevant countries, and it should define a strategy for the use of its other trademarks.
The World Intellectual Property Organization (WIPO) has addressed the significance of app icons as trademarks. Read the ten guidelines on app design optimisation and protection as a prerequisite for a strong brand here.
Feel free to contact us if you need advice on how to register your trademark or protect the rights in your app.
What is the link between trademark, logo and app icon?
In popular terms, a trademark is the company’s communication with the world around. Customers often become aware of a company and its products or services through its trademarks. In that sense, the trademark has two functions in particular: a function of origin and a function of guarantee.
The function of origin helps communicate the origin of a product or a service or, in other words, the identity of the company behind the product or service. The function of guarantee is the customer’s guarantee that products and services marketed under the relevant trademark originate from a specific company and that this company guarantees the quality of the product or service.
‘Logo’, ‘brand’ and ‘app icon’ are only a few examples of terms used to denote trademarks. ‘Trademark’ is the correct legal term, however. Trademarks may be registered, whereby the holder is provided with a certificate of ownership. Alternatively, a company may begin using its trademark and in that way obtain an unregistered trademark right to the extent the trademark is used and marketed.