The shape of a product can be an important element that generates value for a company. For this reason, the protection of three-dimensional forms is of commercial interest and, from the realm of industrial property, there are two main mechanisms for its protection: 3D trademark registration or industrial design.
While both mechanisms are available, trademark law and industrial design law have different objectives, which in turn implies that the requirements and scope of protection differ. The industrial design protects the special shape of the product, that is, its purely aesthetic appearance, and therefore the shape must be novel and must not be the result of functional aspects. On the other hand, the three-dimensional mark is a form that allows to identify that a product is offered by a certain company, that is, it protects the distinctive character of a specific form with respect to others that are found in the market.
Depending on the special circumstances of each case, it will sometimes be more convenient to choose one type of protection over the other, or even both. For example, if the design is already known to the public, it will not be possible to resort to industrial design protection. In addition, trademarks may be renewed indefinitely, an advantage that industrial designs do not have. However, given that some countries are more rigorous when examining a three-dimensional trademark application, the industrial design request can take less time and, in many cases, be less expensive.
An option to ensure the success of the application for registration of three-dimensional trademarks is to attach to the form other elements such as words or images so that its distinctiveness does not fall exclusively on the shape of the product. This is known as a mixed three-dimensional trademark application, a more flexible type of application that in some cases can protect the product’s visual presentation (trade dress) and increases the chances of a favorable decision.
At Pinzón Pinzón & Asociados we want to accompany you in the protection of the forms and special design of your products.
BY:
CAROLINA TOBAR
PINZÓN PINZÓN & ASOCIADOS
