By Vico Ling
In a sea of mobile apps with multiple uses and functions, the app icon is the first visual cue that an app offers in the app store listing. It plays a key role in setting an app apart from its many rivals. The icon harnesses the association of brand identity and recognition formed by its design to be uniquely memorable.
This echoes the role of trademarks, as a recognisable sign or design that identifies and distinguishes a good or services of a particular source from others; that is distinct enough to indicate one source and no other. That being said, most app icons have yet to be registered as trademarks. App developers should seriously start considering doing so.
Should You Register Your App Icon?
Trademarks are represented by words or phrases, slogans, symbols, logos, or images; most of which could be made into an app icon. An icon registered as a trademark retains exclusivity once it has been registered, and prevents similarly designed icons from being used by competitors to steal your user base. This also means that, before you can register your icon as your trademark to ensure that you own the rights to it, there should be no prior registration of a substantially similar mark in the relevant class(es).
A global survey among trademark registers shows that relatively few app owners have registered their icons. On whether this due to oversight, false assumption or ignorance that the registering the name of the app is sufficient, exclusivity and protection will only be guaranteed by registering the actual icon. Intellectual property (IP) rights such as trademarks are often the main assets of a company in the digital economy, therefore their protection is well worth the investment.
Registrability of App Icons
Many app icons appear to be uncreative, some using initials – “M” for mail, “F” for Facebook, or “N” for Netflix; some with descriptive shapes and common colours in their respective industries; then there are others that use their company logos. A trademark must be distinctive in order to serve its purpose as a trade or commercial identifier. Excessively simplified or abstract graphics could be refused due to its general, decorative or functional character. (i.e., a generic calculator icon for a calculator application or a camera icon for a camera application). This was the case in Thailand where several icons (shown below) in class 9 (computer software, covering mobile applications) were rejected:
As more applications for app icons are approved for registration, the Trademark registry will soon be filled with more registered or pending marks for app icons with only limited letters and limited descriptive designs available. Over time, fewer approvals and more refusals for trademark applications of app icons may follow to prevent infringement of the rights of existing trademark owners.
What Makes an App Icon a Good Trademark?
A unique mark helps an app stand out to users. App developers should consider icons or word marks that are suggestive, arbitrary, or fanciful and pair them with a distinctive icon or logo; while taking precautions to ensure that their marks do not infringe those of third parties to increase their chance of success in obtaining registration. In addition, app developers should be aware of the global nature of the market and determine their goals in line with international trademark protection.
For the app icon to be a strong trademark, the logo (device mark) and app name (word mark) should be searched for clearance. Take into consideration similar marks of software, products and services related to the function of the app. It is also useful to search relevant jurisdictions/territories for incidences of infringement or piracy; especially as mobile apps are available across geographical boundaries, thanks to the internet.
Universal Reach vs. Trademark Registration
Mobile applications by their nature transcend traditional territorial limitations upon release. An app created by a person in a remote corner of the world has the potential to become the most popular app, downloaded by hundreds of thousands of people around the globe. Within a few months or even days, a small brand could achieve global reach.
However, in this context, we need to bear in mind that registration of a trademark only allows the owner of the mark the exclusive right to use the mark in the territory in which the mark is registered. A registered trademark in a particular country only obtains rights in that country, and not worldwide. It is therefore prudent to have your icon registered as a trademark in all territories of your targeted user base.
Copyright, an option?
Alternatively, an original icon may also be protected under the Copyright Act 1987, as a graphic element or as an artistic work vested with its author/creator. Malaysia is a signatory to the Berne Convention and therefore contracting member countries such as European Union, United States, Australia, New Zealand, Japan, China, Korea, etc. would also recognize copyrighted works created in Malaysia.
With the number of apps being developed daily on the rise and projected to reach 258.2 billion downloads in 2022 (source: https://statinvestor.com/), we can expect to see more lookalike icons in the global app store on different platforms. Until then, it would be wise to obtain proper trademark protection for your app icon by having it registered as a trademark in the relevant countries.