Industrial Design Marco Marzano de Marinis SMEs Division

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: n Three-dimensional designs: products; n Two-dimensional designs: Ornamentation, patterns, lines or color on a product n Combination

. . . ID, What is and what for: n n n n 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: n exclusive right to – prevent its unauthorized use – copying or imitation by third parties n This includes the right to exclude others from making, offering, importing, exporting or selling the product incorporating the design

Getting protection: n NEW – no identical design has been made available to the public before the date of filing (grace period) n ORIGINAL – independently created by the designer, is not a copy or imitation n 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: n 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: n Filing an industrial design: – Application form n Name n Contact details – Drawings, photographs – Description – Priority claim – Filing fees – (request for deferment of publication)

. . . Getting protection: n To get protection an industrial design must be registered into a Official Register, (EU exception) – an application must be filed through: a national intellectual property office n a regional office, e. g. OHIM, BDO, ARIPO, OAPI n WIPO for the international route offered by the Hague Agreement Concerning the International Deposit of Industrial Designs: n i. e. : Swatch Group deposited 103 applications 2001 using the Hague System for design in

Enforcing Industrial Designs n n n 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 n Copyright protection (automatic) n Copyright protection and industrial design protection n Three-dimensional trademark n Laws on unfair competition

Business Strategy n n n n n 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 marco. marzano@wipo. int

Unregistered design n 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) n Registration within 12 months (25 years of protection) n