By Vivek Sing

Technology for MSMEs: About 3.3 million apps on Google Play Store and 2.1 million on Apple App Store testify to the fierce competition in the field of mobile apps. Companies are fighting tooth and nail to grab users’ attention and increase market share for their apps. This highlights the need for an app icon that stands out. Studies indicate that a great app icon has the potential to increase app downloads by up to 560%. This affirms the need to create an attractive icon that conveys the image and uniqueness of the brand. However, just designing a flawless icon is not enough as it could be easily imitated thus ending the distinctiveness of an app. Therefore, it is highly recommended to save unique app icons as trademarks.

From startups and SMEs to conglomerates, everyone has started registering their app icons as trademarks. Registering app icon trademarks is especially crucial for small businesses, as they lack the resources for lengthy legal battles over trademark infringement. This article explains the need for SMBs to protect their application icons with intellectual property rights and the critical factors involved in registering them:

App Icon Protection

Trademarks for names, symbols, icons, logos and slogans help customers differentiate one company’s products and services from another. An app icon also encourages brand recognition and recall, helping with user base acquisition and retention. It is therefore crucial to protect it with appropriate intellectual property rights.

Critical Factors in Application Icon Trademark Registration

There are some essential parameters to keep in mind to ensure that the icon meets the criteria for trademark registration. These are explained below:

Choose a distinctive icon: An application icon must be unique – visually and phonetically different from icons belonging to competitors. Distinctive icons allow customers to differentiate a brand and its offerings from those of others. Moreover, distinctiveness is essential for registering icons as trademarks.

Selecting a non-descriptive icon: An icon that represents company offerings, or is generic in nature, fails to differentiate itself from competitors. These icons do not correspond to marks or are weak and difficult to register marks.

This does not mean that descriptive application icons cannot be registered as trademarks at all. But it happens as a result of extensive use and huge global attention, which only a handful of apps can boast of. The strongest brand icons are creative logos unrelated to company offerings.

Opt for distinctive colors and themes: Unique and original color combinations can significantly contribute to the distinctiveness of icons, helping 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 improve brand visibility to create strong brands.

Choose existing company logo as app icon: Several well-established brick-and-mortar businesses are foraying into the digital space and opting for independent or standalone branding for mobile apps. However, this approach is not ideal for brand consistency. Adopting existing and popular brand logos as app icons allows businesses to capitalize on brand reputation and avoid re-branding.

Avoid multiple icon changes: A mark must be used as it was originally registered. Altering the design of a registered application icon may result in the loss of trademark recall value as well as intellectual property rights. Such changes can leave new releases vulnerable to knockoffs unless protected by new trademark registrations.

Choose relevant classes for records: Trademark applications are filed in specific classes of goods and services. Downloadable software applications, such as mobile applications, fall under Class 009, while non-downloadable software, including software-as-a-service (SaaS), platform-as-a-service (PaaS) and web/cloud-based software systems, fall under Class 042. If the mark is used for a mobile application as well as downloadable software, its registration in both classes will provide the broadest protection. It is also important to protect the icon in classes relevant to the underlying good(s) and/or service(s) provided through the application.

Global registration: An application icon registered as a trademark in the United States is not protected in India, and vice versa. Mobile apps by nature are used globally, but trademark registrations are territorial. Therefore, an application present in several countries must be registered in all the countries of interest.

Registering app icons as copyrights: The original application icons may also be protected by copyright law to extend additional protection. It is much simpler, cheaper and more convenient because copyright in India enjoys protection in 179 countries, thanks to the Berne Convention.

App icons are key brand identifiers. Whether it is a start-up, an SME or an enterprise, each company must carefully choose and protect its icons with the relevant rights to preserve its brand image and its value. Any organization that fails to protect its brands eventually risks being imitated, losing its credibility and market value.

Vivek Singh is head of the IP Filing & Prosecution practice at Sagacious IP. The opinions expressed are those of the author.