Looking Good: Appeal of Designs in Getting Noticed by the Customer Mr. Paul Bodenham Studio Legale Alma

Outline: What will we know after this session? What “industrial design” means… How industrial design can be a tool to strengthen companies’ branding… What steps a company can take to register a design… How industrial design fits with other forms of legal protection of a company’s products…

Industrial Design Appearance of a product or its part

Industrial Design Represented by lines, contours, colors, shape, texture and materials of a product or its ornamentation, or their combination 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 colors

Industrial Design 3D or 2D

Industrial Design “Set of articles”

Industrial Design Packaging of products/containers

Industrial Design Design of clothes, fashion accessories, textiles

Le Corbusier Chaise long

Eero Saarinen Tulipan Chair

Filed, registered and published on 01/04/2003 000000021-0001 DaimlerChrysler AG Filed, registered and published on 01/04/2003

Design 393-1, registered for Design 1128-7, registered for KOIPE CORPORACIÓN, S.L. Design 1128-7, registered for SILHOUETTE International Schmied AG

Industrial Design Electronic “icons” created by the computer code Graphic User Interfaces (GUIs) seen on computers’ monitors

It attracts potential customers easier.

It wins customers’ loyalty.

It creates harmony between functionalities and form of a product.

It can add value to a company’s products. Industrial design makes products attractive and appealing, increasing their commercial value and marketability

Improving company’s branding strategy 1 General branding strategy multi-brand strategy

Improving company’s branding strategy 2 Product or line extension

Improving company’s branding strategy 3 Brand extension

Why register? Attractive appearance of products can improve a company’s competitiveness. Attractive appearance will bring additional revenues to a company. Attractive appearance becomes successful on the market.

What are the benefits of a registration? It grants an exclusive right: it allows to prevent reproduction, sale and importation of products incorporating the design for a period of 25 years Recoup of investments made in creating nice appearance of products Transfer of design rights more effective (licensing, selling (for example, by licensing a company can reach other markets) Ensuring fair competition and principles of fair trade.

Requirements for Registration of industrial design New Individual Character Is not contrary to public order or public behavior Is not functional

Requirements of Industrial Design Novelty: A design shall be considered new if no identical design has been made available to the public before the date of filing of the application for registration Individual character: A design shall be considered to have individual character if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been made available to the public before

Any other option of protection? Unregistered Design (EU-wide) Regulated under EU Community Designs Regulation (2000) National laws of EU Member States. Used mainly: In fashion, jewellry, apparel businesses. Condition for protection: A design should be made available to the public and known by specialists in that specific business sector. Limited scope of protection: Prohibition of mere copying only. Counter-argument: Alleged infringer could prove that he or she created a design individually.

Registration of designs: Which route to choose? National Regional International

Registration of designs: Steps Application Formal examination Registration Publication Renewal

Registration of Designs: National Route Regulated under national design laws Design application to be submitted to a national IP office Protection limited to that specific country where design is registered

Registration of Designs: National Route In Turkey design applications can be filed according to the Decree-Law No. 554 pertaining to the registration and the protection of industrial design in Turkey entered into force as from June 27, 1995 Industrial designs not registered in Turkey will continue to benefit from the protection of the general unfair competition provisions of the Turkish Code of Commerce according to Article 1, paragraph 2 of the Decree-Law No. 554

Registration of Designs: National Route According to the definitions retained in Article 3, paragraphs (a) and (b) of the Decree-Law No. 554: a. “Design” means the entirety of the various features such as line/drawing, form, shape, color, texture, elasticity, material or other characteristics perceived by the human senses in appearance in whole or part of a product or its ornamentation; b. “Product” means any industrial or handicraft item, parts of a complex system, sets, compositions of items, packaging, get-ups, graphic symbols and typographic typefaces, excluding the computer programs and semi- conductor products”.

Registration of Designs: National Route To enjoy industrial design protection in Turkey, the industrial designs to be registered must: Be new (Article 6); and Have a Distinctive Character (Article 7; the term “Distinctive Character” (Art. 7 “Ayırt Edici nitelik” has been given in the English translation prepared by the Turkish Patent Institute as “Individual Character” : “Özgün Nitelik”).

Registration of Designs: National Route In determining, as of their entirety, the similarity between concerned industrial designs, their common characteristics shall be taken into consideration in lieu of their differences, with a view to assess the liberty of choice at the disposition of the designer in developing the industrial design in question (article 7).

Registration of Designs: National Route An industrial design shall be deemed to be “new” if no identical industrial design has been made available to the public anywhere in the world prior to the date of filing of the industrial design  in Turkey or to the date of priority claimed, if any. “Industrial designs differing only immaterial details shall be deemed to be identical”.

Turkey: What means “new”? A new industrial design means an industrial design which had not been made available to the public anywhere in the world and at any time whatsoever through description, use or in any other manner before the date of an application for registration of such industrial design or before the priority date validly claimed in respect thereof.

Can a multiple industrial design application be filed in Turkey? There is the possibility of filing multiple industrial design applications according to Article 28 in Turkey Each industrial design should have separate visual representations and description.

What does the application for registration have to contain? A description of the industrial design is to be filed with the industrial design application in accordance with Article 26, paragraph 2 of the Decree-Law No. 554 and Article 9 paragraph 1/c of the Implementing Regulations. In multiple industrial design applications, a separate description is to be filed respectively for each one of the industrial design(s) filed under the same (multiple) application.

When is the registration certificate issued in Turkey? The Turkish Patent Institute shall issue the Certificate of Industrial Design Patent after the expiry of the opposition period of 6 months starting from the publication date of the registration of the industrial design in the Turkish Industrial Design Bulletin, provided no opposition is lodged within this time- period.   

Oppositions against Turkish Industrial Designs The opposition is a post-registration opposition (and not a pre-registration one) which can be filed within 6 months following the publication of same in the Official Industrial Designs Bulletin in Turkey In consideration of the opposition lodged, Turkish Patent Institute  may decide to maintain or to invalidate the industrial design registration, whether totally or partially.   

Which courts are competent for the institution of the actions concerning intellectual and industrial rights in Turkey? Both civil and criminal actions regarding Intellectual and Industrial property rights in Turkey are handled by the “Civil Court of Intellectual and Industrial Property and Criminal Court of Intellectual and Industrial Property” established as specialized courts (presently only established in Istanbul, Ankara and İzmir).

Registration of Designs: Regional Route Regulated under Community Design Regulation (2000) One application at the IP Office (OHIM) in Alicante, Spain (saving time, costs) Protection in 27 Member States of the EU

Registration of Designs: Regional Route Regulated under Community Design Regulation (2000) One application at the IP Office (OHIM) in Alicante, Spain (saving time, costs) Protection in 27 Member States of the EU

Application under the Hague Agreement An international application does not require any prior national application or registration An industrial design can therefore be protected for the first time at the international level through the Hague Agreement

Contents of the application The international application must be filed in either English or French on the official form provided by the International Bureau It must contain a reproduction of the industrial designs concerned, together with the designation of the Contracting Parties where protection is sought An international application may include up to 100 different designs. All designs must, however, belong to the same class of the International Classification of Industrial Designs (the Locarno Classification)

Formal Examination by the International Bureau Upon receipt of an international application, the International Bureau checks that it complies with the prescribed formal requirements The applicant is informed of any defects, which must be corrected within three months, failing which the international application is considered abandoned Where an international application complies with the prescribed formal requirements, the International Bureau proceeds to its recording in the International Register and to the publication in the International Designs Bulletin

Substantive Examination by the Office of Each Designated Contracting Party The Office of each designated Contracting Party may refuse protection, in its territory, to an industrial design which does not fulfil the substantive conditions of protection provided for by its domestic legislation Any refusal of protection must be notified to the International Bureau within six months from the publication of the international registration on WIPO’s website

Refusal of protection by National Offices In the event of a refusal, the applicant has the same remedies as he would have had if he had filed the design in question directly with the Office which has issued the refusal The procedure takes place solely at the national level

Effects of the International Registration If no refusal is notified by a given designated Contracting Party within the prescribed time limit, the international registration has the effect as a grant of protection in that Contracting Party The applicable law is that of the Contracting Party where protection has been obtained

Duration of protection International registrations are effective for an initial period of 5 years They may be renewed for an additional period of 5 years Requests for renewals must be presented to the International Bureau, along with the payment of the corresponding renewal fees

Which types of IP rights are involved in iPhone?

Aspects of multi-protection Designs & Patents (or Utility Models) Designs & Copyright Designs & Trademarks Designs & Unfair Competition

Aspects of multi-protection Designs and Patents (or Utility Models) 1. Design protects aesthetical features of a product (it is primarily ornamental), whereas its functional features (functional improvements) can be protected by patents or as utility models. 2. In order to establish its aesthetical function, a design should be viewed in its entirety, and not on a feature- by-feature basis.

Aspects of multi-protection Designs and Copyright 1 Dual (cumulative) protection by design law and by copyright law varies on a country-basis: in some: only for certain types of designs (and not for others), in others: for all types of designs, In others (Syria, US): design of some products is protected under copyright as “works of applied art” or “works of plastic and applied arts”. 2. In a specific case a company should check the national legislation and establish which protection strategy for a certain design is more appropriate.

Aspects of multi-protection Designs and Trademarks 1 – If a product’s design becomes a distinctive feature of that product, it can be protected as a 3D trademark or as a trade dress (in some countries). 2 – Acquisition of a distinctive design within time (in order to protect it as a trademark later) can be also a company’s branding and marketing strategy. 3 – Dual protection is also possible (e.g. icons on iPhone’s monitor), but its regulation varies from country to country.

Aspects of multi-protection Designs and Unfair Competition 1 – Dual protection: under the law against unfair competition and design law 2 – Unfair competition laws usually require to show that a product is distinctive in a certain market, that there is an indication of a product’s origin and that a reputation of such product is infringed by an unfair competition act.

Case Study: Packaging of Company’s Products Would it be possible to protect as design: Closing mechanism of packages? Colour/ornamentation and form of packages? Combination of colour and smell of packages?

Industrial Designs: Checklist Industrial design protects ornamental appearance of goods, not their technical features. YES In most countries a registration is not compulsory in order to protect creative designs. NO Some countries protect an unregistered design for a short period. YES Design protection can be applied together with patents, copyright, trademarks, unfair competition laws. YES

Thanks for the attention! Mr. Paul Bodenham pb@avvbodenham.it