Mobile applications: what protection of icons by trademark law?

applications mobiles et droit des marques

mobile app and trademark lawThe market for mobile application never cease to grow. Global user spent $143 billions in mobile apps in 2020. Twitter, Facebook, Instagram, LinkedIn, Netflix. Each of these app are highly recognizable thanks to their icons.

In order to protect this design, which is synonymous with the definition and recognition of the application, certain conditions shall be met.

“ In some markets, intellectual property is the only way to compete with technology giants that have a much larger marketing and sales force.”

These applications are recognizable not only by their name but also and above all by their visuals, some of them quite atypical like TripAdvisor and its owl with binocular. The icon is therefore a sign of commercial recognition. It is in other words the graphic creation that will allow the consumer to recognize more easily the service or the brand and to distinguish it from competitors present on the market. The icon, to be visualized correctly by the consumer and to stand out can be composed by forms, drawings, letters… The possibilities are infinite. Some companies even use their own name as an icon like Coca-Cola, Netflix or Google.


Why should you protect your application icon?

Protect an icon is the best way to grant oneself an exclusive usage rights over the icon. The benefit of trademark is also to inform of this monopoly.

It also allows to defend yourself effectively against potential counterfeiters.

This defensive protection by a trademark ensures that no other app can use an identical nor similar icon. This is a crucial point in a competitive market such as mobile apps.


The different steps between the creation and the protection of your icon:


1/ Check the availability of the sign

First of all, it is important to know exactly if the envisaged icon is available or not, by searching the availability via the various platforms of the intellectual property offices (INPI, EUIPO or WIPO) and among the prior creations, since graphic creations are also protectable under copyright.  If these searches do not identify any particular obstacle, your icon can be registered as a trademark.


2/ Protecting your application icon

In order to obtain trademark protection for your logo, it must meet the conditions of trademark validity.

The icon that is the subject of the application must be distinctive of the products and services that will be covered by it. This means that the icon cannot describe the proposed product or service.

In marketing terms, this condition is paradoxical since it is generally accepted that in order to be immediately recognizable by the consumer, a logo must describe the product offered or the service rendered.

For example, the icon of the “Apple Music” application is descriptive since it is made up of an eighth note. On the other hand, the icon of the “Deliveroo” application is perfectly distinctive since it is a very stylized and graphic kangaroo head.

Finally, you must establish the wording of your trademark, which consists of the class or classes of goods and/or services that will be rendered or offered by it. The products and services are classified by category according to the Nice classification.

The choice of the wording is essential, it must cover your present activity and anticipate your activity in the short and long term, without being too broad in order to avoid the risk of revocation of the trademark for non-use after five consecutive years of non-use.


3/ Protect the brand name

Protecting the icon of your mobile application is one thing, but you should also think about registering the name of this application as a trademark. The same conditions of validity apply here. It is important to register it since the icon can be subject to variation during the life of your application.


4/ Think about renewing your protection

In France, but also at the level of the European Union and the Madrid system, trademarks are only protected for a period of 10 years, after which it is necessary to renew their protection. Trademarks are in fact renewable for periods of 10 years and this indefinitely. In the absence of such a renewal, your icon or your application name will no longer be protected.


IPzen can assist you in the management of your trademark’s portfolios in all countries of the world. Do not hesitate to contact us.

Read also…

Can social media company Snapchat be sued for designing a speed filter in such a way that it allegedly encourages dangerous behavior? 


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