Industrial design contains aesthetic and decorative characteristics that, without directly affecting profits, provides a particular attraction that can be the determining factor in someone selecting one product over another. As a result, it represents important Intellectual Property to protect.
According to the rulings in the Decisión Andina number 486 from 2000, the only absolute requirement for a design to merit Intellectual Property protection was its novelty. Other criteria that were also mentioned were the need for elements of the design to be visually unique, having a special appearance, and with a specific functional utility.
Nevertheless, since 2002, the Tribunal Andino has reiterated several times that, although the Decisión Andina number 486 from 2000 doesn’t expressly state it, factors that determine whether trademarks included in articles 135 and 136 can or cannot be registered should also apply to industrial designs. As a result, these designs should not only be novel, but they should also contain unique distinguishing features in the interest of protecting consumers and local businesses.
This declaration by the Tribunal Andino is reasonable if it takes into account that both industrial designs and trademarks (especially those that contain a symbolic or 3-dimensional element) are visually discernible. By the same token, the consumer, who by his nature is may be uninformed, could mistakenly confuse one product or brand with another.
For example, if a consumer goes to a chain store and products or trademarks are similar, he or she may mix up one brand with another with a similar look that may be protected under Industrial Design law. This could confuse the consumers, going against market transparency and consumer rights. They can jump to the erroneous conclusion that the two products come from the same company.
The Superintendence of Industry and Commerce has, in fact, taken steps and in several cases has chosen to search for trademark precedents prior to coming to a decision. The idea is to determine if the design being reviewed can be confused with a three-dimensional design that has been previously registered.
In a similar vein, there have been searches for industrial designs when seeking to register a three-dimensional trademark.
These searches were implemented by the SIC for the purpose of giving consent to the guidelines agreed upon by the Tribunal Andino. However, there are still some missing pieces to the puzzle. For example, what happens to trademarks that are not three-dimensional and are confused with industrial designs? We need to remember that industrial designs can be three-dimensional or two-dimensional, and all trademarks that contain symbolic elements can be graphically similar to industrial designs.
On the other hand, in order to violate a registered trademark, it not only needs to be easily confused with another brand, but it also needs to represent (directly or indirectly) a related product or service. This brings into question whether this same factor should be taken into account with industrial designs based upon the product’s purpose.
Taking into account all of the aforementioned information, it is advisable that businesses seek expert counsel in the areas of trademark and industrial design. Legal professionals will recommend conducting searches for antecedents, whether it relates to industrial designs or trademarks. The goal will be to protect companies from future problems and avoid possible fines related to third party rights. At the same time, they will be contributing to market transparency.
Author: Eliana Portilla