In one of our previous articles, we have given an overview of the legal mechanisms available to the companies wishing to bring their app on the market. Now, we would like to delve deeper into the main differentiating element of your app — its icon.
It is by this small square that customers will know your product, hence it makes sense that it allows you to stand out. However, above all, it makes sense that the app icon you choose is eligible for trademark protection so that you effectively ensure exclusive rights to it.
For the app icon to tick not only marketing but also legal “boxes”, there is a number of attention points that we would like to go through below.
To begin with, the main criteria applicable to any sign to evaluate whether it is eligible for trademark protection is distinctiveness.
A sign has to be capable of distinguishing the goods or services of one company from those of the other. In plain English, this means that the customer has to be able to tell one from the other without mixing them or assuming that companies offering them are somehow connected.
There are several additional aspects to the general concept of distinctiveness, relevant in the context of an app icon.
First, regarding colours:
While certain colours have by now become common for certain types of services (think yellow - for taxis or green - for communication), it is nonetheless not a good idea to go with the flow here. Yes, it will be instantly clear what it is, yet such an app icon will not be able to stand out (read: be eligible for trademark protection).
Second, in respect of one-letter icons:
Remember that there are only 26 letters in the English alphabet (28 in Arabic, 33 in Russian, and 50 in Hindi), so the first letter options are somewhat limited (read: probably already taken a long time ago). Besides, once again - getting a distinctiveness based just on a single letter is a challenge. There are, of course, such icons as "N" /fig./ for Netflix or "S" /fig./ for Skype. However, here it is a matter of distinctiveness acquired over time and with quite some budget.
Third, regarding the symbols used:
Once again, while giving a clear indication of what this particular app is meant to be doing might sound like a good idea from a marketing perspective, it is certainly not from a legal one. A "WhatsApp" logo is a well-known brand with acquired distinctiveness, not an example for a newcomer to follow.
In addition to distinctiveness with all its shades, one needs to make sure that the app icon is free to be registered.
Here it is not only about availability in a sense of not having earlier similar or identical trademarks (which can be investigated by doing an availability search). It is also about making sure that there is no unauthorised use of official symbols, registered designs, copyright etc.
Speaking about copyright, since frequently there is an outside graphic designer involved in the design of your app icon, you need to make sure that the copyright is properly assigned to you. You need to own the rights in your app icon.
An important thing to remember about the trademark (and a question that comes over and over again) is that it is protected as it is registered. Meaning: if you have registered your app icon as a red cartoon dinosaur against the blue background, and after a while decided to change the logo to a stylised black and white dinosaur against a white background - you need to apply for a new trademark. Slight alterations will still have you covered, though generally speaking, either you stick to your design, or you must register a new trademark every time you have a change of heart.
And in general, if you care about your app
- you must register a trademark for your app icon!
It is surprising how many companies fail to do that, yet an app icon warrants protection since it is a valuable asset linked to your app.
If you would like to learn more about different legal mechanisms available to companies willing to put their mobile app on the market, have a look here — How to protect your app.
And for tailored advice, you are always welcome to refer to us at Starks - email@example.com or directly to Elena Bachert at firstname.lastname@example.org or to Maria Boicova-Wynants at email@example.com