Can QR Codes be Trademarked?

Those in the print industry have been eager to adopt quick response codes over the past few years. The relatively new advent allows the marketers to put the barcodes on several different items and allow smartphone users to scan them and discover more information. A QR (shorthand for ‘Quick Response’) code is a machine-readable matrix barcode. QR codes originated in the automotive industry and are now commonly used in advertising, payments, product tracing, and detection of counterfeits, etc.

Can we Trademark QR Codes?

QR codes by themselves are unable to be trademarked since Trademark Law only covers the things that allow the public to identify your goods and services easily, such as names, logos, slogans, sounds, or colors. The same is because it is usually not easy to identify the source by only looking at a QR code. However, if you incorporate a QR code into a logo, you can file a Trademark Application to register that logo. Like any other trademark, you have to be using the logo that includes the QR code with the branding for your products or services. Your logo must be a recognizable and distinct aspect of your brand, and it should distinguish your goods or services from competitors within your specific field.

Judicial Viewpoint

SIX Interbank Clearing AG, a major Swiss operator of payment platforms, filed a trademark application in Switzerland for registering the following sign in classes 35, 36, and 38:

The application included a disclaimer that the cross used in the center of the sign would not be reproduced either in white on red background or in red on white background. It was intended to avoid rejection of the application for being too close to the Swiss flag or the emblem of the Red Cross.

The Federal Institute of Intellectual Property rejected the application for the lack of distinctiveness. It considered that:

(1) QR codes have a technical purpose and are not used in direct communication with clients of the claimed services; and

(2) The cross-shaped element in the middle of the sign is too small to make up for the lack of distinctiveness of the sign as a whole.

The applicant then appealed to the Federal Administrative Court. The Court recognized that QR codes might be regarded as decorative patterns or device marks, both of which are signs that are inherently registrable. However, the code ultimately serves a technical purpose, and the matrix can hardly be memorized or easily distinguished from other QR codes by humans. Thus, the sign cannot be used to distinguish goods or services in the market. However, the above only relates to the portion of the QR code that is ‘technically necessary,’ i.e., everything but the center of the matrix. Concerning the cross in the center of the sign, the Court came to a different conclusion. It considered that while this part of the sign has a ‘certain distinctive force,’ the disclaimer proposed by the applicant is too narrow.

The Court remarked that a white cross on black background would still be understood as an indication of origin referring to Switzerland and a black cross on white background as a reference to the Red Cross (for instance, as black and white versions of the Swiss flag or the Red Cross are often used on black and white letterheads). Therefore, the use in black and white – needs to be disclaimed as well.

Distinctiveness needs to be examined based on the overall impression of the sign. The fact that the central-distinctive element is small (compared to the sign as a whole) is not decisive. The Court explained that the relevant public is used to seeing a distinctive element at the center of a QR code. Therefore, the central-distinctive element would not disappear in the eyes of the public, and to the contrary, the public expects some sign readable by humans at the center of the matrix. There is also no public interest in refusing the registration of the sign. It is imperative to note that registering the sign as a trademark does not provide any protection for the technical elements of the QR matrix, which remain a non-distinctive part of the distinctive whole. Also, registering the sign does not prevent third parties from using QR codes, whether the center of the matrix contains a distinctive element.

Therefore, the Court granted the appeal and remanded the case to the Federal Institute of Intellectual Property to register the sign with the broader disclaimer covering the black and white version as well.

It remains to be seen what kind of protection such trademarks will offer to their proprietors; but, considering how popular QR codes have become during the pandemic for the simplest of things such as traveling, eating out, etc., more clarity is certainly expected in the times to come. ✅ For more visit: https://www.kashishipr.com/