App icons can (and should) be registered as trademarks. What do I need to know?

juny 2021

It is true that, today, each and every one of us would find it difficult – to some extent – to live without our mobile phone. An accessory that always accompanies us and keeps us in touch with family, friends, work and entertainment, all in one device.

When we enter the menu of our Smartphone, there are many applications that we have downloaded: social networks, email, e-commerce apps, wallet, maps, our bank’s application, bizum… In short, we could dedicate the whole article to mention applications that we can have on our phone (or on a Tablet), but the question is:

When we enter any of these apps, do we read beforehand which application it is, or do we simply recognize it directly by its icon?

The answer is quite clear, at least in most cases. We no longer read whether we are entering Instagram, LinkedIn or Google Maps, but, by the mere visualization of the icon, we directly associate that “image” with the application – and corresponding company – in question. In other words, these icons have a distinctive function, so can they be registered as a trademark?

On the basis that a trademark is a sign that makes it possible to differentiate and distinguish the goods or services of one company from those of another, the answer is: yes.

What should we consider when registering the app icon of as a trademark?

In addition to the requirements that any IP expert is familiar with when filing a trademark application, i.e. that it distinguishes the goods or services of one company from those of other companies, and that it is represented in the Trademark Register in such a way as to enable the competent authorities – and the public in general – to determine the clear and precise object of the protection granted to its owner, we must not forget that we are talking about new technologies. And this is an aspect to be considered.

It is clear that companies must register their trademarks as they are one of the greatest intangible assets they have in the market because their exploitation brings a great return and benefits to the company.

The name of the brand, its logo, sometimes even its three-dimensional shape, etc. However, with the times we live in, surrounded by new technologies that are here to stay and evolve more and more every day, we must not forget something as basic and identifying as the app icon (for those companies that have their own app, of course). Registering this icon as a brand will also be a very important asset for those who exploit the application.

  • First of all, we must of course choose the distinctive sign that we will use in the app icon, obviously in accordance with the remaining branding and IP strategy that the company follows. Remember that we are talking about icons, so we would be talking about a figurative or mixed trademark, and it is recommended not to err on the side of simplistic or abstract, as it could be rejected by trademark offices for its decorative or functional nature.
  • Secondly, you should also try to ensure that the icon does not describe the service, but that it has a point of originality. We know that a trademark can be refused for being descriptive, and even more so when what is to be registered is an icon, as it will directly reflect the identity of the company in a click.

However, this does not mean that it is not possible to opt for this option, as, for example, in the case of WhatsApp, whose icon is descriptive of its function. However, this is due to the intensive use and the inordinate worldwide attention that has been (and is) given to this application, which very few are fortunate enough to have. So, better to start without this disadvantage and opt for something that does not describe us. Let’s look at Twitter, one of the most famous microblogging networks in the world, whose icon is the silhouette of a bird, which has nothing to do with its function.

  • Thirdly, and in this case, as with the rest of the brands, even when we are not talking about app icons, the colors chosen must be right. Colors are very effective identifiers and contribute strongly to giving value and notoriety to brands, especially in an environment such as technology, where everything is so visual.
  • Fourthly, you should also try not to register the initial letter of the brand, product or service, at least not as a first option. It is clear that, when it comes to designing icons, space is quite limited, but using the initial letter can be a problem if the brand is not renowned, as is the case of Netflix, for example, whose icon is a red N on a black background. But when our brand is more, let’s call it, every day, it can conflict with other brands and their respective icons, as there are millions of companies and brands, and only 28 letters in the alphabet. It is inevitable that someone else has chosen this option, so it is best to avoid it, unless your brand name consists of only a few letters or a short word, such as H&M or ZARA.
  • Fifthly, one option to consider is to use the company’s logo – where it exists. As long as it is possible and appropriate for the app icon.
  • Sixth, and this is true in any IP field, before deciding which icon we want to register as a trademark, a search for availability should be carried out so that the trademark does not clash with prior rights.
  • Seventh, we must also be careful about the design rights of the icon. In many cases, the company may hire a third party to design its trademark, in this case, the app icon. It must be ensured that all rights are transferred to the owner of the icon-brand.
  • Eighth, and this is where the substance of this article lies, is that we must apply to register these icons as a trademark. Surprisingly in practice, at least so far, not too many application owners have applied for the registration of their icons, perhaps due to a lack of knowledge, perhaps due to a lack of a correct IP strategy. It is only registration that guarantees the exclusivity and real protection of the app icon as a trademark.
  • Finally, and ninthly, one should also try not to modify the app icon too much as it has been registered. Trademarks are valid if they are used as registered. It is different when we talk about updating or modernization, but as long as the main essence of the initially registered icon is maintained. Even so, if the update varies in some way from the initial trademark, it is advisable to register it as well. This is the case of Instagram, for example, which has updated its icon so many times: from a brown and beige Polaroid-type camera in its beginnings in 2010, to the current, modernized icon in purple, pink and orange colors.

All in all, and those of us who are clear that new technologies are not the future, but the present, the crux of the matter is to always look for the right IP strategy for our brand and, above all, to adapt to the new changes. Who would have imagined a few years ago that application icons would be able to be registered as trademarks? The same has happened with sound or smell trademarks. Society advances, technology advances and so does Industrial and Intellectual Property.

Eduardo Zamora | Sara del Río

Image: Bagus Hernawan on Unsplash