By Vivek Singh
Technology for MSMEs: Around 3.3 million apps on Google Play Store and 2.1 million on Apple App Store are a strong testament to the cut-throat competition in the mobile apps space. Businesses are fighting tooth and nail to grab users’ attention and increase the market share of their apps. This emphasizes the need for a stand-out app icon. Studies indicate that a great app icon has the potential to boost app downloads by up to 560 per cent. This affirms the need to create an appealing icon that conveys the brand’s image and uniqueness. However, merely designing an impeccable icon does not suffice, as it could be easily imitated – thereby ending an app’s distinctiveness. Therefore, registering unique app icons as trademarks is highly recommended.
From startups and SMEs to conglomerates – all have begun registering their app icons as trademarks. Trademark registration of app icons is especially crucial for small businesses – as they lack resources for lengthy legal battles over trademark infringement. This article explains the need for SMEs to protect their app icons with IP rights, and the critical factors involved in their registration:
Protecting App Icons
Trademarks for names, symbols, icons, logos and slogans help customers differentiate the products and services of one company from another. An app icon also encourages brand recognition and recall, aiding in the acquisition and retention of the user base. Thus, it is crucial to protect it with appropriate IP rights.
Critical Factors in Trademark Registration of App Icons
One must keep certain essential parameters in mind to ensure that the icon fulfils the criteria for trademark registration. These are explained below:
Choosing a Distinctive Icon: An app icon should be unique – visually and phonetically different from the icons belonging to competitors. Distinctive icons enable customers to differentiate one brand and its offerings from those of others. Moreover, distinctiveness is essential for getting icons registered as trademarks.
Selecting a Non-Descriptive Icon: An icon that depicts offerings of the company, or is generic in nature, fails to differentiate itself from competitors. Such icons are either do not fit as trademarks, or are weak trademarks and difficult to register.
It does not mean that descriptive app icons cannot be registered as trademarks at all. But that happens as a result of exhaustive use and enormous global attention, which only a handful of apps can boast of. The strongest brand icons are creative logos unrelated to the company’s offerings.
Opting for Distinctive Colors and Themes: Unique and original color combinations can contribute significantly to the distinctiveness of icons, aiding in their registration. Few colors have become common representatives for certain segments. Therefore, experts recommend adopting unique color elements to stand out from the competition and enhance brand visibility to build strong trademarks.
Choosing the Existing Company Logo as an App Icon: Several well-established brick-and-mortar businesses are foraying into the digital space and opting for independent or stand-alone branding for mobile applications. However, this approach is not ideal for brand coherence. Adopting existing and popular brand logos as app icons allows businesses to capitalize on the brand reputation and avoid new trademark filings.
Avoid Multiple Changes to Icons: A trademark must be used as it was originally registered. Changing the design of a registered app icon may result in the loss of the brand’s recall value along with IP rights. Such changes may leave the new versions vulnerable to imitations unless safeguarded by new trademark registrations.
Choosing Relevant Classes for Registrations: Trademark applications are filed in specific classes of goods and services. Downloadable software applications, such as mobile apps, fall within Class 009, whereas non-downloadable software, including software-as-a-service (SaaS), platform-as-a-service (PaaS) systems, and web/cloud-based software, fall under Class 042. If the mark will be used for a mobile app as well as downloadable software, registering it in both classes will provide the broadest protection. It is also important to protect the icon in the relevant classes for the underlying good(s) and/or service(s) being provided through the app.
Worldwide Registration: An app icon registered as a trademark in the USA is not protected in India, and vice versa. Mobile applications, by nature, are used globally but trademark registrations are territorial. Therefore, an app which has a presence in multiple countries must be registered in all countries of interest.
Registering App Icons as Copyright: Original app icons can also be protected under copyright law to extend additional protection. It is much simpler, economical, and convenient as copyrights in India enjoy protection in 179 countries, owing to the Berne Convention.
App icons are key brand identifiers. Be it a start-up, SME or corporate, every business must carefully choose and protect its icons with relevant rights to preserve its brand image and value. Any organization that fails to safeguard its trademarks eventually risks imitation, loss of credibility and brand value in the market.
Vivek Singh is Head – IP Filing & Prosecution Practice at Sagacious IP. Views expressed are the author’s own.