Three-dimensional trademarks and industrial property

The work will pass through the Object of Study, conceived as the realization of an analysis from the General to the Particular of the existing border between Three-Dimensional Marks and Industrial Designs.

Summary:

Where the following results were obtained in relation to the objectives set.

Definition and characterization of Three-Dimensional Trademarks in their general aspects Definition and characterization of Industrial Designs in their general aspects Recognition of the existence of a border between both figures previously mentioned.

Introduction:

The concept of Industrial Property appears conceived in different legal bodies that define the aspects that comprise it on an international basis, such is the case of the Paris Convention for the Protection of Industrial Property, finally amended on September 28, 1979

In its Article 1.2 it establishes “The protection of industrial property is aimed at patents for invention, utility models, industrial designs, trademarks, service marks, trade names, indications of origin or designations of origin, as well as the repression of unfair competition "

Also, the agreement on trade-related aspects of intellectual property rights (TRIPS) in its Part II, aimed at the Rules relating to the existence, scope and exercise of Industrial Property Rights, dedicates a section to each of the modalities that are regulated in the Agreement, for example:

Copyright and neighboring rights Trademarks Geographical indications Industrial designs Patents Layout designs (topographies) of integrated circuits Protection of undisclosed information Control of anti-competitive practices in contractual licenses

For such purposes, in Cuba, any sign or combination of signs that serves to distinguish products or services from their similar ones in the market is conceived as Brand (1).

The distinctive signs, and in particular the trademarks, constitute elements of relationship that highlight and individualize the products or services that are offered by a natural or legal person to consumers, being an important tool in their management.

An Industrial Model (2) is recognized as any volumetric or flat shape, intended to give a special external appearance to an industrial or artisan product, provided that said shape can serve as a prototype of industrial or artisanal manufacturing, and differs from its similar ones by its shape, configuration or ornamentation, which gives it novelty and "progressiveness"

When assessing the importance of these figures, the following objectives are set for us:

Identify the general characteristics of Three-Dimensional Marks and Industrial Designs. Analyze the existing border between both figures.

In carrying out this project, research methods were used, such as:

Documentary review: here we refer to texts, theses, publications of different authors, everything that resulted in favor of the study in different supports of the aforementioned object, support the criteria set out here and issue evaluations in this regard. Living: conceived as experience and knowledge acquired in the studies completed, which has facilitated the understanding, understanding and vision of the subject, as well as the need for it.

We will work in this study specifically with the Existing Border between Three-Dimensional Brands and Industrial Designs.

Development

I. The Three-Dimensional Marks

Three-dimensional trademarks are understood as the three-dimensional shapes of the product, provided that they can be delimited, including wrapping, packaging, and the shape of the product or its presentation. In themselves they are distinctive volumetric forms of products and services.

Similarly, Cuban legislation includes as Absolute Prohibitions for the registration of a Trademark, that sign that consists of a form that offers a merely functional or technical advantage to the product or service to which it is applied. (3)

Within the tripartite conception for Three-Dimensional Marks, the Necessary Form to Obtain a Technical Result is one of its aspects. In this case, an attempt is made to delimit the borders between the areas of Industrial Property and the registration as trademarks of technical solutions protected by Patent Law is avoided, specifically in this case, Industrial Designs. It is that on the same three-dimensional shape there is NO dual or accumulated protection.

II. Industrial Designs

Within that wide range that constitutes Intellectual Property, Industrial Designs (4) are a specific object of protection, and are recognized in all modern legislation, although their treatment may vary from one country to another.

These designs constitute the external or visible two-dimensional or three-dimensional form, which is incorporated into an industrial or craft product, giving it a special appearance. This term covers a range of aesthetic creations of very different natures.

Within the characteristics of an Industrial Model or Drawing we have then:

Appearance or appearance: it only concerns the appearance or appearance of a product, regardless of its size, procedure, or the elements that were used to obtain it. Make it visible: it must be visible to the eye. Utility product: it is incorporated into a utility product or item.

There are also Prohibitions for the registration of Industrial Designs, such is the case of:

Those that consist of forms that give a functional or technical advantage to the product or article to which they are applied Ideas related to fashion Works of art that are inextricably linked to an Industrial Model Industrial Models contrary to morality, public order or good manners.

That it is universally new is established as an indispensable condition for an Industrial Model and / or Drawing to be registrable.

The simple fact that it has secondary differences with respect to another already known does not establish that it has enough characteristics to consider it new.

III. Existence of a border between both figures.

Etymologically, Border is understood as the Barrier and / or Limit, among other meanings, offered by the Dictionary of the Spanish Language.

These two figures of Industrial Property (Three-Dimensional Trademarks and Industrial Design) have in their existence a legal area called "border", which despite its characteristic of having a great subjective burden and difficult to verify by simple appreciation, is appreciable when the The aesthetic appearance of the product is what determines its acquisition, and makes it more attractive and salable, thus deviating the distinctive function (conceived for Brands) so that the shape becomes a factor that contributes to commercial success, which is protected using the industrial model system.

The exclusion of protection to three-dimensional forms, when they give the product in question a functional or technical advantage and is based on the fact that, otherwise, the time limitation provided by the legal system regarding patent law would be being evaded. It can be interpreted as including utilitarian functionality (when the form provides a technical advantage) and aesthetics, which extends beyond the technical character, also encompassing decorative forms that become the commercial object, as they determine the purchase of the product and consequently sales increase.

In addition, those forms that are considered essential for competition are the cause of refusal in the Registry as Trademarks, it is about preventing the trademark from deviating from its function indicating the origin, to acquire an aesthetic function with its own value. The form may be protected through the temporary protection offered by Copyright or Industrial Designs whose purposes and budgets vary.

The purpose of the Industrial Designs system is to promote investments and efforts aimed at obtaining new products and ornamental forms, which are granted temporarily limited protection, if they have the duality of being novel and unique.

Due to its hybrid nature that combines, in different proportions, aesthetic (artistic) elements and functional or utilitarian elements; the form and characteristics of the protection provided to you will vary depending on whether one of these aspects is preferred.

The quality of a given product can be recognized in its design, which influences the competitiveness of the product in the national and global market.

In the selection of products on the market, the first thing that catches the attention of consumers is the design that they incorporate. The quality of the design is what determines the consumer's decision to buy or not. Here, other collateral elements such as Marketing rules, the incidence of prices, the type of market, the type of consumer, etc. could be assessed incidentally.

Therefore, it is evident that there is a blurred limit between its protection regime (Industrial Design) and other forms of protection within Intellectual Property itself, for example:

This is the legal space that we identify as the Border.

Sometimes, by the use of Industrial Design in the market, the consumer not only manages to differentiate it, but also unequivocally recognizes in it the business origin of the product, which then acts as a distinctive sign that can achieve protection as a Three-Dimensional Brand.

If we consider that any sign capable of distinguishing goods or services in the market can constitute a trademark or trademark, what was expressed in the previous paragraph, takes us directly to the border between both figures of Industrial Property. The possibility of registering the shape of the products, the container and the container as trademarks raises the problem of differentiating the three-dimensional marks from the normal Industrial Designs, which are also incorporated into products, containers and containers.

IV. Cumulative protection. Differences between both figures

For all of the above, it is possible that the shape or configuration of a product can enjoy, at the same time, protection as an Industrial Design and as a Three-Dimensional Brand.

Cumulative protection is possible, and it is present when referring to the non-functional characteristics of the configuration of a product, as long as the shape of the product functions as a brand, since this should not only attract the buyer by mere aesthetic criteria, but It must also lead to the belief that all products that incorporate this form have been manufactured by a particular entity, that is, that they are identified with their commercial origin.

But this cumulative protection is possible as long as the concurrence of protection on the same three-dimensional form, by virtue of the Law of Trademarks and the Law on Industrial Models, refers to the same owner or with his consent.

Therefore, essential differences can be determined between Industrial Designs and Three-Dimensional Marks:

a) Regarding its purpose:

Industrial Design is intended to foster creativity around product designs and investments to produce innovative consumer goods that incorporate such designs. For their part, Three-Dimensional Brands are intended to promote transparency and a spirit of competitiveness in the market and channel consumer demand.

b) Regarding its function:

Industrial Design includes the function of encouraging products to offer consumers an aesthetic as well as functional interest with a view to increasing their commercial value. Three-Dimensional Brands encompass the function of allowing consumers to distinguish the products they carry. the brand of other equivalent competitive products.

c) Regarding their overlap

Industrial Design offers the possibility of cumulative protection as works of art (under certain laws) and only in case they are sufficiently distinctive as trademarks, and only with regard to non-functional characteristics. Three-Dimensional Marks provide the possibility of cumulative protection as works of art and in certain cases as Industrial Designs (under certain laws), exclusively with regard to non-functional characteristics.

d) Regarding its scope

The Industrial Design gives the owner the right to the registered design (s), so that he can prevent the manufacture and distribution of any product in which the design that belongs to him is incorporated (monopoly effect).Three-Dimensional Trademarks grant the owner trademark rights and can only prevent unauthorized use of the trademark in relation to the products in question, but cannot prevent the manufacture and distribution of those products if the trademark is not used.

e) Regarding its term

The Industrial Design in its exclusive rights over these have a limited term, which ranges between 10 and 25 years, counted from the registration or deposit. Three-Dimensional Trademarks in their exclusive rights over registered trademarks can enjoy an unlimited term, if the registration is periodically renewed and / or the mark is properly used in commerce.

Conclusions:

First: Three-dimensional trademarks are understood as the three-dimensional shapes of the product, provided that they can be delimited, including wrapping, packaging, the shape of the product or its presentation. They are themselves distinctive volumetric shapes of products and services.

Second: The Cuban Legislation establishes as an Absolute Prohibition for the registration of a Trademark, the sign that consists of a form that offers a merely functional or technical advantage to the product or service, to which it is applied.

Third: Industrial Designs constitute the external or visible two-dimensional or three-dimensional form, which is incorporated into an industrial or artisan product, giving it a special appearance.

Fourth: There are also Prohibitions for the registration of Industrial Designs, such is the case of:

Those that consist of forms that provide a functional or technical advantage to the product or article, to which they are applied. Ideas relating to fashion. Works of art that are inextricably linked to an Industrial Model. Industrial Models contrary to morality, public order or good customs.

Fifth: Three-Dimensional Trademarks and Industrial Designs have in their existence a legal area called "border", which despite its character with a great subjective burden and difficult to verify with the naked eye, is appreciable when the aesthetic appearance of the product is the which determines its acquisition, and makes it more attractive and salable, thus deviating from the distinctive function (Conceived for Brands), the shape becomes a factor that contributes to commercial success, which is protected by the industrial model system.

Sixth: There is a diffuse boundary between the protection regime (Industrial Design) and other forms of protection, within Intellectual Property itself, for example:

Seventh: It is possible that the shape or configuration of a product can enjoy protection as an Industrial Design and as a Three-Dimensional Brand at the same time.

Eighth: There are essential differences between Industrial Designs and Three-Dimensional Marks:

Regarding its purpose Regarding its function Regarding its overlap Regarding its scope Regarding its term

Bibliography:

The Protection of Three-Dimensional Marks: Controversies and Challenges for an Examination. Marcos Martínez, M.Sc. Maylen. April 27, 2005. Specialist in the Legal Department of the Cuban Office of Industrial Property.

Master in Intellectual Property Management. Module: Trademarks and other distinctive signs. Topic 2: Absolute prohibitions on the registration of trademarks. Rodríguez Calvo, Hosanna. Specialist of the Legal Department of the Cuban Office of Industrial Property.

Master in Intellectual Property Management. Fourth edition. Module: Industrial Drawings and Models. Topic 1. Macola, Ms.C. Aymeé; Pérez Herrera, Ing: Marta R.

Legislation Consulted:

Agreement on Trade-related Aspects of Intellectual Property Rights, “TRIPS Agreement”, of April 15, 1994, of great importance, obliges the members of the WTO to comply with minimum protection requirements.

Microsoft Reference Library, Encarta, 2004.

Decree Law number 68, of Inventions, Scientific Discoveries, Industrial Models, Trademarks and Denominations of Origin, dated May 14, 1983.

Decree Law 203 "On Trademarks and other Distinctive Signs", dated December 24, 1999. Published in Extraordinary Gazette No. 3 of May 2, 2000.

Decree Number 209, Regulation of the Industrial Property Law, dated February 7, 1956. Published in the Extraordinary Official Gazette on February 21, 1956

Resolution Number 63/2000 of May 24, 2000, which approves and enforces the Regulation of Decree-Law Number 203 on Trademarks and other Distinctive Signs.

References:

(1).- Decree Law No.: 203, “On Trademarks and Other Distinctive Signs”

(2).- Decree-Law No.: 68 “On Inventions, Scientific Discoveries, Industrial Models, Trademarks and Denominations of Origin”, of the May 14, 1983. Article: 108

(3).- Decree Law No.: 203, “On Trademarks and Other Distinctive Signs”. Section one. Article 16.1, paragraph e).

(4).- Industrial Design in Cuba, both in doctrine and in the Legislation that conceives it, has in itself Industrial Drawings (due to their two-dimensional aspect) and Industrial Models (due to their three-dimensional aspect).