Currently, entrepreneurs often face the question of getting certificate for a three-dimensional trademark or patent for an industrial design?
In conditions of constant competition, the appearance of a product and its packaging play an important role in promoting a brand, and therefore significant funds are invested in their development. It is very important to protect your intellectual property from copying and/or unfair competition. Their legal protection can be ensured by obtaining a registration certificate for a trademark or a patent for an industrial design, or perhaps simultaneously for both objects.
In order not to make a mistake in choosing between them, it is necessary to know their features, which will allow you to determine the optimal strategy for protecting rights. It should be remembered that both objects have different legal natures.
For example, among trademarks, the most interesting are three-dimensional signs in color or black and white. Often these marks are depicted as three-dimensional objects, combinations of lines and shapes in a spatial arrangement, which may represent the shape of a product or packaging, or parts thereof. That is, they can repeat the design of a product or its appearance, which is an industrial design.
An industrial design (Article 1352: “a decision on the appearance of a product of industrial or handicraft production”) has original and unique essential features (shape, color, visual elements, texture, etc.). It is the result of the creative work of the author, whose name can be indicated in the patent, in contrast to a three-dimensional trademark, which formally does not have an author, and therefore copyright does not apply to it.
The procedure for obtaining the exclusive right to an industrial design (patent) and a trademark (registration certificate) has much in common: filing an application in both cases, conducting an examination and, as a result, issuing a title of protection, registration deadlines.
However, there are differences - fees are lower when filing an application and obtaining a patent for an industrial design, and the cost of patent attorney services is usually higher.
In this case, the trademark is registered for a list of goods and services selected by the applicant indicating the classes of the ICLG, the number of which will determine the cost of registration. But in the case of an application for an industrial design, there is no such list, since the object of patenting is a specific product with specific functions.
In addition, the differences between these two objects of intellectual property lie in the fact that exclusive rights to a trademark can exist indefinitely, since the mark can be renewed an unlimited number of times for 10 years. And the rights to an industrial design are initially valid for five years and can be extended for another 5 years, but so that the total period does not exceed twenty-five.
A significant difference is also the absence of an obligation to use a registered industrial design, while the owner of a trademark, if he does not use his designation within 3 years after its registration, then loses the right to it, and the mark is canceled ahead of schedule at the request of any interested party.
Problems may also arise during the examination process, especially in cases where applicants receive a negative decision from Rospatent. To avoid such a situation, it is important to know the features of each of these intellectual property objects and take into account the requirements for their registration.
Thus, at the stage of the formal examination, the requirements for a three-dimensional trademark and an industrial design are almost the same - the completeness of the package of necessary documents and the correctness of their execution, payment documents are checked.
At the stage of substantive examination, a three-dimensional trademark is checked for its distinctiveness, which performs its main function - it individualizes the goods and services of a particular manufacturer on the market. If the image of a mark repeats the manufactured product, then it does not have distinctiveness and cannot be registered as a three-dimensional mark. The effect of the territorial principle for a trademark is also taken into account.
An industrial design must have world novelty (that is, the totality of its essential features should not be known from publicly available data published before its priority date), and also be original, since the essential features of an industrial design are due to the creative nature of the product’s features.
Before filing applications for both objects of intellectual property, it is recommended to conduct a preliminary search to assess the chances of obtaining an exclusive right to use them and to identify possible violations of the rights of third parties. Conducting such research can help you make a choice - to register a three-dimensional trademark, obtain a patent for an industrial design, or obtain an exclusive right to both objects in order to ensure maximum business protection.
I would like to add that recently the requirements for the design of three-dimensional trademarks have become more stringent, and applicants are often rejected due to their lack of distinctiveness. Therefore, it is most profitable to start with patenting an industrial design, and only then try to register the designation. It should be remembered that the choice of a specific instrument for protecting intellectual property rights is individual and should be based on the interests of a particular applicant. To avoid mistakes that can lead to financial, time and reputational losses, it is still worth using the services of patent attorneys and intellectual property lawyers.
