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

2. 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…

3. Industrial Design
Appearance of a product or its part

4. 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

5. Industrial Design
3D or 2D

6. Industrial Design
“Set of articles”

7. Industrial Design
Packaging of products/containers

8. Industrial Design
Design of clothes, fashion accessories,
textiles

9. Le Corbusier
Chaise long

10. Eero
Saarinen
Tulipan Chair

11. Filed, registered and published on 01/04/2003
DaimlerChrysler AG
Filed, registered and published on 01/04/2003

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

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

15. It attracts potential customers easier.

16. It wins customers’ loyalty.

17. It creates harmony between functionalities and
form of a product.

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

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

20. Improving company’s branding strategy
2 Product or line extension

21. Improving company’s branding strategy
3 Brand extension

22. 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.

23. 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.

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

25. 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

26. 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.

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

28. Registration of designs: Steps
Application
Formal examination
Registration
Publication
Renewal

29. 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

30. 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

31. 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”.

32. 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”).

33. 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).

34. 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”.

35. 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.

36. 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.

37. 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.

38. 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.   

39. 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.   

40. 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).

41. 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

42. 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

43. 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

44. 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)

45. 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

46. 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

47. 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

48. 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

49. 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

50. Which types of IP rights are involved in iPhone?

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

52. 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.

53. 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.

54. 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.

55. 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.

56. 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?

57. 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

58. Thanks for the attention!
Mr. Paul Bodenham