Could 3D trademarks and industrial designs constitute consecutive rights?

At times it is difficult to discern which of the legal figures mentioned above is more suitable for the protection of an intellectual and/or industrial creation, or, if concurrent rights may fall on them and it is necessary to obtain protection simultaneously.

As basic requirements, generally accepted by most comparative jurisdictions, for a creation or invention of form to constitute design or patent design to be essentially novelty and individual character, we adhere to the definition of Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs in Articles 4 and 5:

Article 4.- Novelty

A design shall be considered new if no identical design has been made available to the public before the date of filing of the application for registration or, if priority is claimed, the date of priority. Designs shall be deemed to be identical if their features differ only in immaterial details.

Article 5.-Individual character

  1. A design shall be considered to have individual character if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been made available to the public before the date of filing of the application for registration or, if priority is claimed, the date of priority.
  2. In assessing individual character, the degree of freedom of the designer in developing the design shall be taken into consideration.


A design or patent design usually has a protection or reservation of rights in favor of the inventor temporarily limited, ranging, for example, between 14 years United States Regulations or 25 years European Community Regulations (Euipo).

The question is whether, once a patent design has expired, it is capable of being protected as a 3D trademark?

It is very common the existence of companies that seek to broaden their spectrum of protection, applying for registration as a 3D of an industrial design whose expiration is about to happen, converting a reserve of right of time limitation, under the laws applicable to inventions, in a trademark right whose validity is indefinite.

From our point of view, this conversion could be understood as a evasion in law since we are trying to extend the validity of an exclusive right temporarily limited, by means of a change of registration form that grants it an imprescriptible right.

Therefore, we understand that this change of modality cannot be made without violating the established legal stipulations, unless there are modifying circumstances that allow such improper novation.

If we take into account the provisions of Article 4 of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark:


Article 4.- Signs which may constitute a trade mark of the Union

Any signs may be trade marks of the Union, in particular words, including personal names, designs, letters, numerals, colours, the shape of the product or its packaging, or sounds, provided that such signs are suitable for:

(a) distinguish the goods or services of one undertaking from those of other undertakings;


Under this provision, we understand that, only when an industrial design or patent design has acquired distinctive capacity in the market “per se”, allowing to distinguish this product from other companies, would it be capable of protection as a 3D trademark without breaching the established legal precepts.


In short, in order for an industrial design or patent design to be eligible for protection as a 3D trademark and not to be subject to evasion in law, it must at least[1] and, obligatorily, must have acquired, for the goods or services in respect of which registration is sought, a distinctive character as a consequence of the use which has been made of it as a design.


Consequently, very few of the existing designs or patents designs, once their legal life has expired, will have the opportunity to be protected as a three-dimensional trademark, and, furthermore, the public must obligatorily discern and differentiate them by their peculiar form from those products existing in the market and of the same species or condition, that is to say, they must really meet the requirements of novelty and singular character required to have constituted design[2].


[1] See Case C-30/15 P, the Court of Justice of the European Union (ECJ) has set aside the judgment of the General Court of 25 November 2014 and the decision of the Second Board of Appeal of the Office for Intellectual Property of the European Union of 1 September 2009, determining the invalidity of the European Union trade mark protecting the three-dimensional shape of Rubik’s cube.
2] See Case C-136/02 P, European Court of Justice (ECJ) of 7 October 2004*. In the case brought on 8 April 2002 by Mag Instrument Inc. v Commission of the European Communities
Nemesio Fernandez Fdez.-Pacheco