Transcript The Importance of Distinctive Signs: An Introduction to Industrial Designs, Collective Marks, Certification Marks and Geographical Indications for SMEs Guriqbal Singh Jaiya Director, SMEs Division World Intellectual.

The Importance of Distinctive Signs:
An Introduction to
Industrial Designs, Collective
Marks, Certification Marks and
Geographical Indications for SMEs
Guriqbal Singh Jaiya
Director, SMEs Division
World Intellectual Property Organization (WIPO)
The Small and Medium-Sized Enterprises (SMEs) Division of WIPO
IP for Business Series
The Small and Medium-Sized Enterprises (SMEs) Division of WIPO
WHAT IS AN INDUSTRIAL DESIGN?
An industrial design is the ornamental or aesthetic
aspect of an article. The design may consist of
three-dimensional features, such as the shape or
surface of an article, or of two-dimensional
features, such as patterns, lines or color.
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WHAT IS AN INDUSTRIAL DESIGN?
Industrial designs are applied to a wide variety of products of
industry and handicraft: from technical and medical
instruments to watches, jewelry, and other luxury items; from
housewares and electrical appliances to vehicles and
architectural structures; from textile designs to leisure goods.
To be protected under most national laws, an industrial design
must appeal to the eye.
This means that an industrial design is primarily of an aesthetic
nature, and does not protect any technical features of the article
to which it is applied.
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INDUSTRIAL DESIGNS ARE IMPORTANT
BRANDING TOOLS
JUST AS TRADEMARK DISTINGUISH A COMPANY’S
CORPORATE IMAGE, GOODS AND SERVICES;
AN INDUSTRIAL DESIGN REFERS TO THE FORM OF NEW
PRODUCTS TO DIFFERENTIATE THESE FROM CURRENT
PRODUCTS.
COMPANIES CONSTANTLY LAUNCH NEW DESIGNS
Industrial Designs contribute to branding strategy and therefore need
legal protection.
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INDUSTRIAL DESIGN
(2D - Two dimension)
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INDUSTRIAL DESIGNS CAN DESIGNATE
NATIONAL CULTURE & FOLKLORE
GRAPHIC Designs
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• INDUSTRIAL DESIGN
DISNEY 3D CHARACTER - GRAPHIC
DESIGN
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• DISNEY DIGITAL 3D
DESIGN”
THE NEW CHICKEN STAR
CHARACTER
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The Value of a Creative Design
• MAKES A PRODUCT ATTRACTIVE AND
APPEALING
• TARGET SPECIFIC MARKET SEGMENTS
• CREATE A NEW MARKET NICHE
• STRENGTHEN BRANDS
• LAUNCH A NEW STYLE OF PRODUCTS AND
INCREASE CONSUMER’S DEMAND
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Industrial Design protection> registration
• Exclusive right to prevent unauthorized copying or
imitation by others
• Return on investment
• Business asset increasing commercial value of a
company and its products
• Registered design may be licensed (or sold)
• Encourages fair competition and honest trade
practices
The Small and Medium-Sized Enterprises (SMEs) Division of WIPO
Reasons for protecting designs in EU
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70% prevent copying
23.4% company policy
20.3% get ahead competition
10.1% prestige
6.5% prevent people think “I copy”
5.8% other
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Practical Aspects
•
•
•
•
Protecting Industrial Designs
Protecting Designs Abroad
Enforcing Industrial Designs
Other Legal Instruments for
protecting
• Protecting designer’s rights
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What to remember when seeking
protection
• The design must be NEW; and/or
• The design must be ORIGINAL; and/or
• The design must have INDIVIDUAL
CHARACTER
• Dual design and copyright protection for some
types of designs: Not in all countries; varies a lot
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Remember what cannot be protected
• Designs that fail to meet requirements of
novelty, originality and/or individual
character
• Designs dictated by technical function
• Designs with official symbols or emblems
• Designs contrary to public order or morality
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Scope of Rights
• The right to prevent unauthorized copying or imitation by
third parties.
• Legally exclude all others making, offering, importing,
exporting or selling product with a specific design.
• However an infringement can be legally combated only if
the owner has record his design(s) and received a formal
certificate of protection.
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Keep in Mind
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•
•
•
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The time it takes to register a design
The cost of registration
Keeping design secret prior registration
Grace period
Who may apply for ID protection
Who owns the right over ID
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Protection at home and abroad
• The national route
– each country where you seek protection but a long and
expensive process
• The regional route (for some countries only)
– countries members of a regional agreement: African
Regional Industrial Property Office; Asean IPO; Benelux
Design Office; Office for Harmonization of the Internal
Market of the EU; Organisation Africaine de la Propriété
Intellectuelle
• The international route
– Hague agreement - Administered by WIPO (42 countries)
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Using ID as a Business Asset
• Licensing
– ADDITIONAL SOURCE OF REVENUE
– EXPLOITING A COMPANY’S
EXCLUSIVITY OVER DESIGN
– LICENSING CONTRACTS
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ENFORCING INDUSTRIAL
DESIGNS
• Responsibility on owner of the ID to monitor, identify
imitators/counterfeiters and decide on action
• Advice of IP lawyer
• “ Cease and desist” letter to infringer
• Search and seize order
• cooperation with customs authorities to prevent importation of
infringing good (Books: Cover)
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IP and Marketing
Trademarks
• Collective marks
• Certification marks
• GIs
Individual marketing
Joint marketing
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What is a collective mark?
• Sign ‘capable of distinguishing the origin or
any other common characteristics,
including the quality’ of the goods/services
of different enterprises which use the sign
under the control of the registered owner
• Typically, the owner of collective mark is an
association of which those producers are
members
• Registered as such in trademarks registry
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How does a collective mark work?
• Regulation of use (art 24 Slov Law)
– persons authorized to use
– criteria for membership
– conditions of use
• e.g. particular features/qualities of the products
– sanctions against misuse
• Authorization to use
– membership
– application or automatic
– comply with the rules
• Control
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• Thus, function of collective mark is to
INFORM the customers :
– About the origin of the products
• e.g. ceramic artisan, member of a specific association in Llublijana
– About a level of quality or accuracy,
geographical origin, or other features set by
the association
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Benefits for SMEs
1.Economies of scale (registration cost,
advertising campaign, enforcement, etc.)
2.Reputation acquired on the basis of common
origin or other characteristics of the products
made by different producers/traders
3.May facilitate cooperation amongst local
producers/traders
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4. Creation of collective mark hand in hand with
development of certain standards and criteria (rules)
and common strategy
 collective marks can become powerful tool for
local development
 harmonization of products/services,
enhancement of quality
 no licenses
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Example: “Interflora”
• To buy, order and send flowers at almost anywhere in the
world
• > 70.000 florists in 150 countries
• Emblem : Mercurio with flowers in hand
• Slogan: “Say it with flowers"
• Guarantees freshness, flower quality and value of every
Interflora relay order
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What is a certification mark?
• Sign indicating that the goods/services have been
certified by an independent body in relation to one
or more characteristics
– composition, manner of manufacture, quality, origin,
material, accuracy, etc.
• Owner is usually an independent enterprise,
institution, governmental entity, etc. that is
competent to certify the products concerned
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How does a certification mark work?
• Regulations of use
– quality, composition or other characteristics of the
goods/services
– control measures
– sanctions
• Authorization to use
–
–
–
–
anyone who meets with the prescribed standards
not confined to membership
generally: licence agreement (fee)
owner not allowed to use
• Control
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Benefits for SMEs
• Guarantee for consumers of certain quality
• Benefit from the confidence that
consumers place in users of certification
mark
• Strengthen reputation
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• For example, certify that:
 Product is handmade
 Certain ecological requirements have been
respected in the production procedure
 No children were employed in the production
process
 Products have been produced in specific
geographical region
 Products are made 100% of recyclable materials
 Products are made by indigenous group
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Example: “RUGMARK”
• Global non-profit organization working to end
child labor and offer educational opportunities
for children in India, Nepal and Pakistan
• RUGMARK label is assurance that no illegal
child labor was employed in the manufacture
of a carpet or rug
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“RUGMARK”
• To be certified by RUGMARK, carpet-manufacturers sign
legally binding contract to:
– Produce carpets without illegal child labor
– Register all looms with the RUGMARK Foundation
– Allow access to looms for unannounced inspections
• Carpet looms are monitored regularly by RUGMARK
• Each labeled carpet is individually numbered
 enables origin to be traced back to the loom on which is was
produced
 also protects against counterfeit labels
The Small and Medium-Sized Enterprises (SMEs) Division of WIPO
What is a GI?
• Sign used on goods that have a specific
geographical origin and possess qualities or
a reputation that are due to that place of
origin
• Source identifiers
• Indicators of quality
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• Most commonly, consists of the name of the
place of origin of the goods
• Country, region, city
• E.g. Champagne (France), Nuoc Mam (Vietnam)
• In some countries : can also be figurative
element
• E.g. Eiffel tower, Egyptian pyramid
• E.g. birds, animals associated with a place
Matterhorn,
Switzerland
Tower Bridge,
London
Eiffel Tower,
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How does a GI work?
• Authorization to use
– Each enterprise located in the area has right to use
• For products originating from that area  LINK
• Possibly subject to certain quality requirements
• Link between product and place
• Place where product is produced (industrial products, crafts)
• Place where product is extracted (clay, salt)
• Place where product is elaborated (liquor,cheese)
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•
Unauthorized persons may not use GIs if such
use is likely to mislead the public as to the true
origin of the product
•
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for not originating from geographical place
•
for not complying with prescribed quality standards
Sanctions:
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Court injunctions preventing unauthorized use
–
Payment of damages
–
Fines
–
Imprisonment
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Typical examples:
• Agricultural products that have qualities that derive
from their place of production and are influenced by
specific local factors, such as climate, type of soil,
altitude, etc
– E.g. wine, champagne, cognac, port, sherry, whiskey
– E.g. cheese, yoghurt
– E.g. olive oil, ham, potatoes, honey, rice
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Typical examples:
• Also: handicrafts and medium-tech goods
–
–
–
–
E.g. ‘Hereke’ (Turkey) for carpets
E.g. ‘Limoges’ (France) for porcelain
E.g. ‘Swiss’ for watches
E.g. ‘Arita’ (Japan) for ceramics
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Example: “Talavera de Puebla”
- Considered to be one of the finest
ceramics in Mexico
- Handmade and painted by hand
- Historical linked with Arabic culture
- Typical are the geometric designs in
blue color painted on a white
background
- The design and colours of the artwork
are created following traditional rules
and know-how
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How is a GI protected?
• National
• Regional
• International
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Protection on national level
– Specific title of protection
• Registration with IP office (Russia)
• Decree (France)
• Special laws for the protection of GIs (India)
– Certification marks or collective marks
• Cert: e.g. in the U.S.A.: Darjeeling, Swiss, Stilton
• Coll: e.g. Japan; agricultural label in France
– Passing-off, Unfair Competition,
Consumer Protection laws
• If reputation + misleading
• Pass off: e.g. Scotch whisky – Peter Scot in India
• Cons prot: e.g. ‘made in Japan’; Egyptian cotton
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Protection on international level
– No legally binding international register
for all GIs
– Bilateral agreements
• e.g. EU-Bulgaria for wine names
– International treaties
The Small and Medium-Sized Enterprises (SMEs) Division of WIPO
– International treaties
• TRIPS:
– minimum standard of protection for WTO members
– if misleading or act of unfair competition
– enhanced level of protection for wines and spirits
– no protection if GI is generic term for the goods in the member
state
• Lisbon:
– international registration system
– member countries must prohibit imitations, including terms
like “type” or “kind”
– cannot become generic, as long as protected country of origin
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Benefits for SMEs
• GIs shift the focus of production to
quality
 increased production
 local job creation
• Reward producers with higher income in
return for efforts to improve quality
• Provide consumers with high-quality
products whose origin and mode of
production is guaranteed
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Disadvantages
– Inconsistent protection
• Absence of GI system in many countries
• Civil law
– Registration
– Only similar goods
• Common law
– Repution enough (e.g. Champagne in India)
– Also dissimilar products
• Additional protection for wines and spirits
– GIs may become generic terms (e.g. Chablis in
America)
The Small and Medium-Sized Enterprises (SMEs) Division of WIPO
Thank You
e-mail: [email protected]
http://www.wipo.int/sme/
The Small and Medium-Sized Enterprises (SMEs) Division of WIPO