In search of the aesthetic
By Thomas Golda, Director Searches, Brandstock
In the fast changing world of Intellectual Property, many more companies are now moving beyond the more traditional word mark protection to establish trademark protection for the aesthetic aspects of their most innovative new products.
From the signature shape of a dual-cup yogurt container to the unique look and feel of various coffee pods, pads, tabs, and cups, the physical form and visual aspect of an item, or its packaging, is often not only the most distinctive element of a product but also provides a unique functionality that distinguishes the item from the competition. The priority then becomes how best to provide protection for a company’s most inventive and commercially distinctive products. Deciding not only how to protect that exclusive shape, feel, or design – either through a 3D trademark and/or with an industrial design registration – but also how to search for similar prior rights that may present obstacles to protection (and risk of infringement) is absolutely crucial.
An Industrial Design Registration is intended to protect the aesthetic aspect of a product. Much like 3-D trademark protection, an industrial design can be a three-dimensional form (although it can also protect a two dimensional design element like a pattern or color sequence).
The standard for protection requires that the design be “novel and have individual character.” The assessment of novelty and originality varies from country to country.
In general, however, an industrial design is considered to be new or novel if it has not previously been disclosed to the public and it may be considered original if it significantly differs from known designs or combinations of known design features. Similarly, a design that is purely “functional” cannot be protected when the features of the product are dictated solely by what it is designed to do. However, beyond these limitations, there are seemingly endless opportunities to protect the unique shapes, colors, textures, and patterns of products.
Given the critical role that design has in business and marketing, the use of industrial design protection is steadily growing and plays an important role in any business’s intellectual property portfolio. Meanwhile, industrial design submissions at EUIPO have surpassed 918,000 with almost 86,000 filed in 2015 alone (up from just under 73,000 filed in 2010).
In parallel, nearly 39,000 ‘design only’ trademarks are registered at EUIPO, with a steady annual increase in such applications from just under 2,700 device mark applications filed in 2010 to more than 3,600 in 2015.
Given the large quantity of existing and continuously filed industrial design applications and ‘design only’ trademark, effective searching is becoming more and more important. Accordingly, before the application process even begins, searching in all of the relevant databases for existing registrations and prior applications for industrial designs as well as potentially similar 3D marks is a vital first step.
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