Industrial DesignIndustrial Design

Marco Marzano de MarinisSMEs Division

ID, ID, What is and what What is and what for:for:

Refer Refer only only to the to the ornamentalornamental or or aestheticaesthetic aspects of a product aspects of a product;; even when the product may have even when the product may have technicaltechnical or functional features or functional features

...ID, What is and what for:...ID, What is and what for:

Three-dimensional designs: products;Three-dimensional designs: products;

Two-dimensional designs: Two-dimensional designs: Ornamentation, patterns, lines or color Ornamentation, patterns, lines or color

on a producton a product

CombinationCombination

...ID, What is and what for:...ID, What is and what for:

A key factor in determining success of a product in the A key factor in determining success of a product in the marketmarket

Visual appeal influences the decision of customers to Visual appeal influences the decision of customers to prefer one product over anotherprefer one product over another

Make a product attractive or appealing to customersMake a product attractive or appealing to customers Help companies to differentiate their product from Help companies to differentiate their product from

those of competitorsthose of competitors Create a new niche marketCreate a new niche market build up businesses IP strategies build up businesses IP strategies bring in additional revenue (through sales or licensing)bring in additional revenue (through sales or licensing)

...ID, What is and what for:...ID, What is and what for:

Through the registration of an industrial design the Through the registration of an industrial design the owner obtains:owner obtains:

exclusive rightexclusive right to to – prevent its unauthorized useprevent its unauthorized use– copying or imitation copying or imitation

by third partiesby third parties

This includes the right to exclude others from This includes the right to exclude others from making, offering, importing, exporting or selling the making, offering, importing, exporting or selling the product incorporating the designproduct incorporating the design

Getting protection:Getting protection: NEWNEW

– no identical design has been made available to the no identical design has been made available to the public before the date of filing (grace period)public before the date of filing (grace period)

ORIGINALORIGINAL– independently created by the designer, is not a copy independently created by the designer, is not a copy

or imitationor imitation INDIVIDUAL CHARACTERINDIVIDUAL CHARACTER

– the overall impression produced by the design on an the overall impression produced by the design on an informed user differs from the overall impression informed user differs from the overall impression produced on such a user by an earlier design which produced on such a user by an earlier design which has been made available to the publichas been made available to the public

...Getting protection:...Getting protection:

Designs that are generally barred from Designs that are generally barred from registration:registration:

– lacking novelty, originality or individual characterlacking novelty, originality or individual character

– exclusively dictated by the technical functionexclusively dictated by the technical function

– incorporating protected official symbols or emblemsincorporating protected official symbols or emblems

– contrary to public order or moralitycontrary to public order or morality

...Getting protection:...Getting protection:

Who May Apply for Protection:Who May Apply for Protection:

individual or a legal entityindividual or a legal entity– person who created the designperson who created the design– Employer having a contract with the Employer having a contract with the

designerdesigner– Company that commissioned the design Company that commissioned the design

to an external designer under contractto an external designer under contract

...Getting protection:...Getting protection:

Filing an industrial design:Filing an industrial design:– Application formApplication form

NameName Contact detailsContact details

– Drawings, photographsDrawings, photographs– DescriptionDescription– Priority claimPriority claim– Filing feesFiling fees– (request for deferment of publication)(request for deferment of publication)

...Getting protection:...Getting protection: To get protection an industrial design must be To get protection an industrial design must be

registered into a Official Register, registered into a Official Register, (EU exception)(EU exception)– an application must be filed through:an application must be filed through:

a national intellectual property officea national intellectual property office a regional office, e.g. OHIM, BDO, ARIPO, OAPIa regional office, e.g. OHIM, BDO, ARIPO, OAPI WIPO for the international route offered by the WIPO for the international route offered by the

Hague Agreement Concerning the Hague Agreement Concerning the International International Deposit of Industrial Designs:Deposit of Industrial Designs:

i.e.: Swatch Group deposited 103 applications i.e.: Swatch Group deposited 103 applications for design in for design in 2001 using the Hague System2001 using the Hague System

Enforcing Industrial Enforcing Industrial DesignsDesigns

Responsibility for identifying and taking action against Responsibility for identifying and taking action against imitations or infringement lies with the ownerimitations or infringement lies with the owner

Owner should Owner should – monitor the use of the design in the marketplacemonitor the use of the design in the marketplace– identify any imitators or counterfeitersidentify any imitators or counterfeiters– decide whether, how and when to take actiondecide whether, how and when to take action– ask for measures through customs authoritiesask for measures through customs authorities

Cease and desist letter informing the infringer of a Cease and desist letter informing the infringer of a possible conflictpossible conflict

Legal action against the infringerLegal action against the infringer

Other Legal Instruments for Other Legal Instruments for Protecting Industrial DesignsProtecting Industrial Designs

Copyright protection (automatic)Copyright protection (automatic)

Copyright protection Copyright protection andand industrial design industrial design protectionprotection

Three-dimensional trademarkThree-dimensional trademark

Laws on unfair competitionLaws on unfair competition

Business StrategyBusiness Strategy

Integrate issues of design protection into a broader Integrate issues of design protection into a broader business strategybusiness strategy

CostsCosts Type of protectionType of protection Ownership issuesOwnership issues In-house development or outside agencyIn-house development or outside agency TimingTiming Advertising, marketing, public display in an exhibitionAdvertising, marketing, public display in an exhibition Export markets?Export markets? License?License?

Thank you!Thank you!

WIPO, SMEs website: WIPO, SMEs website: www.wipo.sme/intwww.wipo.sme/int

marco.marzano@wipo.intmarco.marzano@wipo.int

Unregistered designUnregistered design

In the European UnionIn the European Union– it is possible to obtain limited industrial design it is possible to obtain limited industrial design

protection for unregistered designs for three/one protection for unregistered designs for three/one yearsyears

– this provides the opportunity to test the market this provides the opportunity to test the market before going through the effort and expense of before going through the effort and expense of registering the designs (only available for the one registering the designs (only available for the one year UD option)year UD option)

Some designs may remain in the market only Some designs may remain in the market only for a short time (fashion)for a short time (fashion)

Registration within 12 months (25 years of Registration within 12 months (25 years of protection)protection)