Transcript Industrial Design Marco Marzano de Marinis SMEs Division ID, What is and what for: Refer only to the ornamental or aesthetic aspects of a.

Industrial Design
Marco Marzano de Marinis
SMEs Division
ID, What is and what for:
Refer only to the ornamental or aesthetic
aspects of a product; even when the product
may have technical or functional features
...ID, What is and what for:
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Three-dimensional designs: products;
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Two-dimensional designs: Ornamentation,
patterns, lines or color on a product
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Combination
...ID, What is and what for:
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A key factor in determining success of a product in the
market
Visual appeal influences the decision of customers to prefer
one product over another
Make a product attractive or appealing to customers
Help companies to differentiate their product from those of
competitors
Create a new niche market
build up businesses IP strategies
bring in additional revenue (through sales or licensing)
...ID, What is and what for:
Through the registration of an industrial design the owner
obtains:
 exclusive right to
– prevent its unauthorized use
– copying or imitation
by third parties
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This includes the right to exclude others from making,
offering, importing, exporting or selling the product
incorporating the design
Getting protection:
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NEW
– no identical design has been made available to the public before the
date of filing (grace period)
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ORIGINAL
– independently created by the designer, is not a copy or imitation
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INDIVIDUAL CHARACTER
– the overall impression produced by the design on an informed user
differs from the overall impression produced on such a user by an
earlier design which has been made available to the public
...Getting protection:
Designs that are generally barred from registration:
– lacking novelty, originality or individual character
– exclusively dictated by the technical function
– incorporating protected official symbols or emblems
– contrary to public order or morality
...Getting protection:
Who May Apply for Protection:
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individual or a legal entity
– person who created the design
– Employer having a contract with the designer
– Company that commissioned the design to an
external designer under contract
...Getting protection:
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Filing an industrial design:
– Application form
 Name
 Contact details
– Drawings, photographs
– Description
– Priority claim
– Filing fees
– (request for deferment of publication)
...Getting protection:
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To get protection an industrial design must be
registered into a Official Register, (EU exception)
– an application must be filed through:
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a national intellectual property office
a regional office, e.g. OHIM, BDO, ARIPO, OAPI
WIPO for the international route offered by the
Hague Agreement Concerning the International
Deposit of Industrial Designs:
i.e.: Swatch Group deposited 103 applications for design in 2001 using
the Hague System
Enforcing Industrial Designs
Responsibility for identifying and taking action against imitations
or infringement lies with the owner
 Owner should
– monitor the use of the design in the marketplace
– identify any imitators or counterfeiters
– decide whether, how and when to take action
– ask for measures through customs authorities
 Cease and desist letter informing the infringer of a possible
conflict
 Legal action against the infringer
Other Legal Instruments for
Protecting Industrial Designs
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Copyright protection (automatic)
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Copyright protection and industrial design protection
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Three-dimensional trademark
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Laws on unfair competition
Business Strategy
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Integrate issues of design protection into a broader business
strategy
Costs
Type of protection
Ownership issues
In-house development or outside agency
Timing
Advertising, marketing, public display in an exhibition
Export markets?
License?
Thank you!
WIPO, SMEs website: www.wipo.sme/int
[email protected]
Unregistered design
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In the European Union
– it is possible to obtain limited industrial design protection
for unregistered designs for three/one years
– this provides the opportunity to test the market before
going through the effort and expense of registering the
designs (only available for the one year UD option)
Some designs may remain in the market only for a
short time (fashion)
 Registration within 12 months (25 years of protection)
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