What are the different IP rights?
IP might be the key for your commercial success
Before starting this course you might have thought that IP had nothing to do with you. By now, you should have realized that it might be the key for your commercial success. After all, look at yourself and around yourself … you are covered with IPRs! … your house and your offices are full of IPRs!
- Look at your watch: it has a trademark, its special shape may be protected by an industrial design and perhaps the mechanism inside is covered by a patent.
- Look at your garments: you are literally covered with trademarks and the shape of your trousers, shirt, shoes is probably protected by industrial designs.
- Look at your smartphone and your computer: again, it has a name (a mark), a beautiful shape that enticed you (industrial design), an innovative technological mechanism (patents) and it works thanks to the software (i.e.: copyright).
… got the message? YOU CANNOT DO WITHOUT IP!
Let’s now go into the details and learn how you can really capitalize on your creativity and innovation efforts.
In today’s globalized economy, consumers can choose their products or services from a wide variety of sources. The criteria that will guide their choice include price, technical features, aesthetical considerations, better quality, etc. Once they have a positive experience with a given product, they may develop some sort of loyalty towards its producer. This reciprocal trust between producers and users is at the core of branding, which may represent the key to your commercial success.
Historically, the term “branding” was adopted to differentiate one person's livestock from another's by means of a letter or other differentiating symbols burned, with a hot iron, into the animal's hide. Nowadays, the concept has lost its violent connotation and it includes all the techniques that producers adopt to differentiate their products from those of the competitors, and to attract consumers, gain their trust and establish their loyalty towards a product. Marketing technics and tools play undoubtedly a crucial role in this regards.
As indicated in the World Intellectual Property Organizaton’s (WIPO) 2013 Report “Brands: Reputation and Image in the Global Marketplace”, companies worldwide spend billions of dollars every year to develop and protect their brands to differentiate their products from those of their rivals.
This differentiation function is obviously crucial.
Trademarks, as principal distinctive signs, evidently play a fundamental role in this regard, by promoting a company’s uniqueness, reputation and image. A substantial part of this course will therefore be devoted to trademarks, their selection, protection, enforcement and administration, with a view to enhancing your company’s commercial success.
However, this course adopts a wider notion of branding, including also:
- geographical indications, that are also a particular type of distinctive signs for very particular products; (see section on GIs)
- domain names, as your SME will inevitably have to market its products or services on the internet and therefore will need an internet address (see section on domain names); and
- industrial designs, as nowadays, market success or failure depends to a large extent on beauty or … lack of beauty, as another fundamental differentiating factor (see section on industrial designs).
Consumers will buy a particular product when its brand conveys a message to which they can and want to relate; when they share a certain set of values, life style and approach embodied in the brand.
In other words, if you want to enhance the chances for success of your SME, not only at home but also abroad, make sure you embrace a carefully conceived branding strategy. This will include the adoption of a trademark (that will enthuse potential consumers and make them proud of being associated with the product), a clear focus on the ornamental and aesthetic shape of your product, making it so beautiful that consumers around the world will prefer yours as compared to those of your competitors. In some specific sectors, you may also take advantages of the image and reputation associated with a given geographical indication.
Successful companies realize that branding is not a cost, but a potentially very rewarding investment, and it requires ongoing (human and financial) efforts to advertise and market the products and to develop new and improved products. See also the section on marketing. Please refer also to the section on “marketing”.
Let’s now analyze one by one these different aspects of your future branding strategy.
What is a trademark?
In simple terms, we could say that trademarks are … the name that you give to your products (or services - Considering that marks may cover goods and/or services, every time these training materials refer to trademarks for products/goods, it should be remembered that the same reasoning would also be applicable to services.); the name by which a consumer calls your product.
However, we can be more precise and define trademarks as: “Any sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings, shall be capable of constituting a trademark” (this definition comes from art. 15 of the TRIPS Agreement, but it is very similar to the one provided by your national trademark law).
In particular, trademarks may be constituted by words, including personal names, letters, numerals, figurative elements and combinations of colours, as well as any combination of such signs.
By way of examples, have a look at the trademarks below:
The vast majority of marks consist of WORDS, such as
… These are the so-called “word marks”.
However, very often trademarks consist of logos, images or little designs.
In other cases, trademarks contain both words and logos. These are the so-called “complex marks”
Later on, you will learn that sometimes particular shapes may be protected as trademarks. These are the so-called “3-D marks”
Finally, while primary colours may not be “monopolized” as trademarks, colour combinations or special colour shades may become valid marks.
What a trademark is NOT:
It does not protect the content of your invention.
It does not protect the ornamental shape of your products.
If you have paid a design studio to develop your logo, make sure you settle all COPYRIGHT issues over the logo itself. You do not want to discover that the studio owns the rights over the logo!
What are the functions of a trademark?
The main function of trademarks is to distinguish the products and/or services of one undertaking (individual or a company) from those of other undertakings. Their distinctive character is of paramount importance and we will spend a substantial amount of time becoming familiar with this concept, as the distinctiveness of your mark may be the key to … your success.
We could add that trademarks also possess another (secondary) function: they help consumers identify the source of the products and/or services. This, however, does not mean that by looking at the product, the consumer must immediately recognize the person or company that has manufactured or commercialized it. It is sufficient that the consumer recognizes that those goods or services come from a source that he/she trusts.
Let’s try to make it even more practical: trademarks are what enable customers to select the products or services that they want to buy.
You should use this precious tool to make sure that people will choose YOUR products! That they are faithful to YOUR products! That they trust YOU and identify themselves with the message enshrined in YOUR mark.
How do you choose a mark?
Selecting and adopting a trademark is perhaps one of the most important and challenging steps you will take in your professional career. Would you ever buy a product that carries a trademark that has bad connotations? Or one that is impossible to pronounce or remember? Certainly not. In addition, your mark has to comply with the Cambodian Trademark Law that lays down a number of legal requirements. Just to make things more complex for you, remember that the mark you will select has to be in line with the legal, cultural and marketing requirements of all the countries where you may wish to export.
Marketing and cultural considerations
Let’s proceed in order, and analyze the marketing and cultural considerations first. These are some practical tips to help you chose your new mark.
Make sure that it is EASY to
- pronounce, and
Your local language is a beautiful language and you should be proud of it. However, if you adopt as a mark a word written in your own language or characters, be prepared to have serious problems once you want to export abroad: it may be difficult to read and pronounce it, especially if your language is written in non-Latin characters. And you will have added another layer of difficulty for consumers who try to remember your brand—not a good commercial move. This does not mean that you cannot use local words as your trademark. Just try to select a word that is easy to pronounce and remember. For non-Latin characters, you may also consider writing in Latin, or more generally, in characters that would enable your future consumers to read it.
Remember, if your trademark can be qualified as “easy” (easy to …. see list above), this would probably be a good start.
By way of example, would you ever adopt the following mark for, let’s say, shoes?
Probably NOT such a good idea. Actually, a recipe for disaster. Who would ever be able to pronounce and remember such a complicated and excessively long word?
Make sure that it is suitable for all types of media or means of communication
Nowadays, marketing, promotion and advertisement for your products have to take different and more modern forms and formats:
- of course it will feature prominently on your web site;
- the name of your product (your mark) may have to be presented in a radio program;
- perhaps it will be sung in a commercial jingle;
- you may want to devote some of your financial means to advertise it on TV (national and international), newspapers, or through paper posters, leaflets, and brochures;
- finally, you should not neglect social media, Facebook, Twitter, etc.
These considerations should play an important role in your choice of a mark. Again, try to avoid words that would be difficult to pronounce for a radio or TV speaker, or special colours that may not appear as they should once placed on a gigantic poster, and avoid as well words that are so long they would not be suitable to the famous hashtags.
By now, you must have already realized that some of the most popular marks are closely connected to particular colours. What is the colour associated with Coca-Cola? And with Pepsi-Cola? What chocolate do you associate with the colour purple or violet? What are the colours of the arched-M of McDonald? And the four squares of Microsoft? Probably the correct answers popped into your mind with the vivid power of visual images, with the strength and vitality of their colours.
In other words, colours can play a powerful role in brand recognition, product identification and … commercial success.
This means that it might be a good idea to consider selecting one or more colours that will characterize your products and therefore may constitute an important part of your mark. However, also bear in mind that colours carry messages: red for dynamism, green for nature, gold for something precious and high class, blue for purity, yellow for something … “sunny”.
The issue of colours should also be analyzed in the broader context of packaging: the way in which you present your product on the market may help its commercial success or may determine its failure.
Would you ever buy rice crackers in packaging which is simply … unattractive, ugly, gives the idea of something unsafe or dirty? But the issue of packaging is only partially linked to trademarks.
Make sure that it does not have any undesired connotations in ANY language and culture
We live in a globalized world and if you plan to export anywhere outside your country, you have to start thinking big, thinking global. Certainly, with your mark you would not want to offend or distress anyone in your country for a number of legitimate reasons, including the fact that this would negatively affect your sales and your overall commercial success. Your customers would not want to buy products carrying a mark that they perceive as insulting to who they are and what they stand for, or offending their beliefs, feelings, religion, values. Well, the same reasoning applies to any other country where the products carrying your mark will be exported and marketed.
The problem in this regard is that people in other countries have different beliefs, different levels of sensitivity, different ethics. While internet is a precious source of information and may help you avoid possible strategic mistakes, it might be appropriate to consult a specialist.
Make sure that it is not identical to an existing domain name
While the issue of domain name is explained in another section, at this point, you should just remember that if you discover that the mark you plan to adopt corresponds to an existing domain name owned by a third party (particularly in your country or region, or with the extension “.com”), that should raise red flags. Since you will never be able to acquire that domain name, potential customers looking for your products will digit your mark in internet search engines, and instead of reaching your site, they would end up in somebody else’s site (perhaps even that of a competitor). This would not only imply a potential loss of clientele, but also possible problems with the owner of that site, who most probably also owns one or more similar trademarks.
Let’s now move to the (more complex) analysis of the legal requirements that you need to respect in order to obtain a valid mark in your country. The good news is that these requirements are quite harmonized around the world.
As already discussed above, trademarks should be capable of distinguishing the goods and/or services of a given person/company from those of other persons/companies. However, this explanation is not very helpful to understand in practice the concept of distinctiveness. Real life examples might help you understand the difference between “distinctiveness” (which means that marks are valid, strong) and “descriptiveness” (meaning that the marks are non-valid or, at the very least, weak). This understanding might help in making the right choice in the selection of your future mark.
These considerations are based on the famous “principle of SPECIFICITY” (or “speciality”) whereby marks are considered distinctive or not depending on the specific list of goods/services for which the marks are registered and used. In other words, there is a strong link between the mark and the goods/services it represents.
Let’s start with the mark APPLE®. It is evident that if this mark was used for selling apple juice, the mark would be descriptive (i.e., descriptive of the products sold under the mark). Instead, if the same term was adopted for products other than apples and fruits (e.g., computers), the mark would be distinctive, and therefore valid.
Similar considerations may apply to the trademark CAMEL®: if used to sell camel-related products (e.g. camel milk, camel leather), it would be considered descriptive, while if used for any other products (e.g. cigarettes), the mark is clearly distinctive.
Obviously, trademarks like KODAK® or like GIULIO that have no meaning cannot be descriptive.
In other words, in order to make sure that your proposed mark is distinctive you have to proceed as follows:
- stand in the shoes of the average consumer of that particular product in your country (used as your reference point);
- ask yourself if that consumer would know the meaning of your proposed mark (or understand its message);
- if the answer is positive, then ask yourself if there is a direct relationship between the meaning/message of the mark and the goods/services covered by the mark;
- if the answer is again positive, then you are in trouble and you might have to choose a less descriptive mark.
Remember also that there are techniques whereby your partially descriptive mark may be rendered more distinctive. For example, try to:
- add a (non-descriptive) logo
- file and use your mark in a special script (and not in standard capital letters)
- file your mark in a special colour (and avoid filing it in black and white)
Look at the example on the right: the mark ECONOPHONE would probably be too descriptive, but with the special logo, script and colour, the mark may pass the examination.
Finally, you should be aware that the level of distinctiveness of your mark may change over time and with its utilization: a partially descriptive mark may become more distinctive if used for years in a consistent manner to the point that consumers learn to recognize it and … to distinguish its products and services. This phenomenon is called “secondary meaning” or “acquired distinctiveness”. Later, you will learn that the distinctive level of a mark may also go down and … disappear. This is the so-called “vulgarization” of the mark (please see later, section on “How to avoid problems”).
As already explained in the point above, your mark should NOT describe anything relating to the goods or services for which it will be registered and used. In particular, your mark should not describe the qualities, characteristics, the origin, the intended purposes, etc. In other words, remember that the following terms might put you in trouble:
- The noun of your product (e.g., “pizza” if you sell pizzas, “phone” if you provide telephone services);
- Adjectives (beautiful, wonderful, economical, fast, etc.);
- Laudatory expressions (the best, number one, super, the king of …, etc.);
- Geographical terms (the name of a town, village, or valley, as this would describe the origin of the goods in question).
However, not all the terms above would automatically render your mark null and void. If you pair or combine it with other highly distinctive terms or logos, you might be able to register it.
In addition, remember also that the more distinctive your mark, the more funds you will need to publicize it. In other words, marks that are slightly more descriptive (but not too or completely descriptive) may become more readily known to the relevant public on the market. It is a question of checks and balances.
Your future mark should not and cannot mislead the relevant public. In other words, it cannot convey a message that is not true.
By way of example, a mark for a cosmetic lotion that gives the idea that the product contains “aloe vera”, while in reality it contains only chemical ingredients, would mislead the public. The same would apply to a mark that hints to the “freshness” of the milk contained in the packaging, while the product is based on powdered milk. Finally, a geographical term or the name of a place might lead consumers to believe that the products come from that place. If the products indeed are manufactured in geographical origin, then the mark will be … descriptive (descriptive of the origin of the goods, as seen above). Instead, if the products do not come from the location used as a mark, but from another place, then the mark would be considered as … misleading, as it will provide false information as to the origin of the goods covered by the mark. By now, you must have realized that, despite their wide utilization in the past, marks containing geographical terms are nowadays very difficult to register. Try to avoid them.
Let’s try to summarize the concept of a misleading mark and make things more practical: misleading marks are … “liars”, and as such they should not be accepted.
A generic mark is a sign that corresponds to the ordinary term used by the relevant public to name or describe a particular product. Do you think, for example, the term “chair” could be adopted as a mark by a producer of … chairs? Clearly not.
In this context, please remember two things:
- IP protection is granted to reward a creative endeavor that led to a creative solution (and clearly there is nothing creative in trying to adopt as a trademark the ordinary way that a certain item is called).
- IP rights provide their owners with geographically-bound exclusive rights, like a real monopoly. It is therefore reasonable that no one could be granted exclusive rights on an ordinary term used by people to identify a certain product.
In short, try to avoid generic terms.
NOT contrary to public order, morality, religion
We have already mentioned above that your trademark should not offend the sensitivity of people, their values, their morality, as it would not be a wise commercial move. Your trademark law goes one step further and actually prohibits the adoption of marks that are contrary to public order and morality. And the laws of other countries are even broader and explicitly also encompass marks contrary to the religion.
If you are interested in potentially exporting to foreign countries (where culture, values, feelings are different), and you want to avoid wasting time and money, try to avoid adopting as a trademark:
- The names of drugs like COCAINE
- The names of weapons such as BAZOOKA
- Names linked to international terrorism, for example, ISIS
- Names or images that are sexually explicit or simply too provocative … NO EXAMPLES PROVIDED
- Names or symbols linked to your religion (and the religion of any country where you might export your products)
NOT identical to a national flag and other State emblems
The basic idea is that nobody can use as a trademark (i.e., for commercial purposes), the name of your country, its flag, its emblems, etc. Only the IP Office can decide who is entitled to use such symbols and in what context. Please try to avoid them.
NOT in conflict with prior rights
Lastly, your proposed mark should not be in conflict with the exclusive rights of owners of prior marks (or other IP rights for that matter). This is the so-called “relative grounds” for the refusal of a mark (as opposed to the previous legal requirements that are referred to as “absolute grounds”). How can you find out if the mark you plan to adopt is available or “new” or it conflicts with earlier rights? You have to conduct an availability search using a reliable database (also called “trademark search”). This is not as easy as it may seem, as there are some considerations that you need to keep in mind. In particular, a mark may NOT be considered as new or available if in the same country:
- There are prior identical or similar signs,
- For identical or similar goods and/or services.
By way of example, if in your country, the trademark ANDRES is already registered for shoes …
- Nobody else will be able to register (again) the trademark ANDRES for shoes, as the signs are identical and the products are identical.
- Similarly, nobody will be able to register the trademark ANDRES for sandals, as the signs are still identical and the products are clearly similar.
- On the contrary, anyone could register the trademark ANDRES for cars, as even though the signs are identical, the products are evidently different.
- Finally, no one will be able to register the trademark ANDREZ or ANDRETH or BIG ANDRES for shoes or sandals, as the signs are similar and the products are identical or similar.
Things are quite straightforward when we refer to “identical” signs or identical goods/services. However, when signs or goods/services are “similar”, the situation becomes more complex.
In this context, please remember that two signs (trademarks) may be similar from a:
- VISUAL point of view, i.e., when the two marks look alike, because of a number of elements, like colours, shapes, letters, etc.;
- PHONETICAL point of view, i.e., when the two marks sound similar;
- CONCEPTUAL point of view, i.e., when the meaning of the two marks is the same (e.g. the English word “house” and the Khmer term “ptea” have the same meaning and therefore if used as marks, they would be conceptually similar).
Then you need to check if the products or services used by the owner of the prior mark are identical or similar to those that you intend to use with your mark. In this context please note that goods/services are considered similar if they:
- Have the same purpose;
- Have the same public;
- Have the same channels of distribution;
- Are inherently linked (like the door of a car and the car itself);
- Are “cross-substitutable” (i.e., one can replace the other, should the first not be available. For example, a client who does not find the soft drink he/she wishes to drink, can easily order another soft drink, as these can all replace one another);
- Belong to the same class of the Nice Classification (however, please bear in mind that there are similar products that may belong to different classes and different products may fall under the same class).
Perhaps, two small but useful practical suggestions should be added to conclude this point:
- Before undertaking a real trademark search (for which you may want to seek professional help), you may try to type your proposed mark in any search engine on the internet. If you see that other companies in the same field use identical or similar names (particularly in your country or in countries where you may wish to export your products), then that might be a good indication that your proposed mark is not available and you should immediately change it, i.e., before spending money to file it and then receive a refusal from the trademark examiner.
- In ASEAN, you are fortunate as there are national (the database of the local IP Office) and regional databases containing all trademarks protected ASEAN countries. The regional databased developed by ASEAN Member States is ASEAN TMview, and this may be accessed at http://www.asean-tmview.org.
What are the special types of marks?
Please have a look at the following types of marks which present some peculiarities that deserve consideration. Take note however that not all countries protect all these special types of marks.
Certification marks: signs used to indicate that the goods/services in connection with which it is used are certified by the proprietor of the certification mark in respect of the origin, materials, mode of manufacture, quality, accuracy or other characteristics. By way of example, the mark WOOLMARK and 900 are used to certify the quality of garments (to indicate that they are exclusively made of wool) and of silver (to guarantee a minimum quantity of silver is in the products).
Collective marks: signs used to distinguish the goods/services of the members of an association from those of other undertakings. Applications for such types of marks have to contain a copy of the Regulations of Use for the collective mark.
3-D marks: while the vast majority of marks are two-dimensional (and as such are normally affixed on goods or on their packaging), some particular three-dimensional shapes (of products or their packaging) may in themselves qualify to be protected as trademarks. Needless to say, they will have to comply with all the requirements for trademark protection (see above). The bottles of Coca and Perrier are examples of 3-D marks, as already shown in previous sections.
Well known marks: unlike ordinary marks that are only protected in the country where they are registered and only for the products/services expressly listed in the application and similar products/services), well known marks enjoy a much broader protection.
- If they are considered to be well known in your country, they will enjoy protection even if not filed and registered in your country;
- If a well-known mark is also registered in your country, it will enjoy protection for all goods and services, provided that use of that trademark in relation to those goods or services would indicate a connection between those goods or services and the owner of the registered trademark and provided that the interests of the owner of the registered trademark are likely to be damaged by such use.
Now that you have selected your ideal trademark, you are ready to start thinking about protecting it at home and in all the other countries where you want to export your products.
For how long my mark is protected?
10 years (from the filing date)
Can I renew the protection?
YES! As many times as you want.
Trademarks and other IP rights
Sometimes people mistake different types of IPRs and confuse one with another. These are:
3D trademark and industrial design
Some countries do not accept the registration of a 3D trademark so alternatively you may try registering a 3D trademark as an industrial design. The only disadvantage of course is that a trademark may be protected perpetually while protection for a design is limited.
Trademark and domain name
Domain names create a monopoly right on a name or word, independent of the goods or services the website offers. As domain names are generally registered on a first come first served basis and independently of the territory, the owner of a trademark may find that another person has registered a domain name that is the same as, or confusingly similar to, his/her trademark.
Trademark and Geographical Indication
Trademarks are very similar to geographical indications as both are indicators; the main difference between both concepts is that trademarks identify a good or a service and geographical indications identify the geographical region from which the product originates. Please refer to the section on geographical indications.
What is an industrial design?
Industrial designs can be considered as the ornamental shape (or visual appearance) of utilitarian products. In other words, the accent is on the beauty of your products (and this is why we talk about “ornamental/ aesthetic” shape, as opposed to functional shape that would instead be protected under patents or utility models).
In addition, this type of protection is suitable only for products of industry or handicraft that are manufactured on a large scale, and this is why we refer to “industrial” design (as opposed to simply “design” which would be protected under copyright).
Industrial designs may be three-dimensional (e.g., the shape of shoes, garments, watches, cars, etc.) or two-dimensional (such as lines, patterns, texture applied on a given product, like fabrics). See examples below:
To identify the shape that will invite consumers to buy is not an easy or cheap task--it requires profound studies of the current and future tastes and trends of actual and potential consumers. This necessitates creativity and financial resources to carry out the necessary R&D.
What an industrial design is NOT:
It does not protect the functional shape of your product
It does not protect the distinctive shape of your product
What are the functions of an industrial design?
The most important function of an industrial design is certainly that of catching the consumers’ eyes, making one particular product stand out among all other similar or competing products. In other words, industrial design also contributes to the success of your branding strategy by enhancing the commercial value of your products and facilitating their commercialization. In this case, the distinguishing factor is the shape of your products, or, if you want to say so, their beauty.
In today’s economy where most of the competing products possess similar technical features, what will determine consumer’s choices, apart from the price of the products, is precisely their appearance.
Industrial design protection will provide you with exclusive rights over that particular competitive advantage: the unique shape of your products. You will be the only one in your country (or in any country where you registered your design) that will be able to use that specific shape of products. You will have the right to prevent third parties, not having your express authorization, from making, selling or importing products that bear or incorporate your industrial design. This exclusivity will enable you to obtain a fair return on your investment, i.e., the often substantial financial expenditure necessary to develop and protect that particular winning shape/appearance.
It is important to remember that, as mentioned above, industrial design protects only the aesthetical appearance of a product and not:
- its name, which should be separately protected as a trademark (see section on trademarks).
- its technical features, which would have to be protected through patents or utility models.
There are two types of designs:
- with two-dimensional features (such a pattern, lines or colours) or,
- with three-dimensional features (such a shape or surface).
Finally, exactly like trademarks, industrial designs represent a formidable business asset that would:
- Raise the overall value of your company;
- Enable you to use them as collateral to borrow money from a bank;
- Increase your revenues by licensing your design to third parties in other countries.
How do you choose an industrial design?
Most of the marketing and cultural considerations that we analyzed in relation with the selection of trademarks, are also applicable to industrial designs. The problem, however, is that industrial design is all about beauty and, as a famous old proverb says “beauty is in the eye of the beholder”. In other words, the perception of beauty changes from country to country, changes with the times and trends. Fashions come and go. The most challenging task for you will be to anticipate the trends (or even to create a trend) and determine what shape will be appreciated by a large portion of the relevant public in the years to come. What shape will trigger consumers’ decision to buy your products instead of those of your competitors? This requires knowledge of the tastes of your current and future consumers, plenty of creativity and possibly the help of a professional with specific expertise in this area.
Let’s now concentrate on the legal requirements that your industrial designs must comply with in order to be validly registered in most countries.
Numerous countries, provide that an industrial design can be validly registered if it is:
- New: a particular shape is novel if it has not been disclosed to the public, anywhere around the world, by publication, display or simply used in any other way, before the filing date. If you want to find out if a particular design is new or not, you have to carry out an availability search. This can be done at www.asean-designview.org, as well as on the web sites of the major IP offices, such as those of the EU, Japan, USA, etc.).
- Not dictated essentially by technical or functional considerations: as already mentioned above, functional or technical shapes do not enjoy protection as industrial designs, but if anything, as patents or utility models.
- Not contrary to public order or morality: in other words, the particular 2-D or 3-D shape cannot be vulgar, offend people, values and beliefs. In this context, you may want to recall the arguments that we analyzed when presenting trademarks contrary to public order and morality.
However, you should bear in mind that in other countries (like for example in the EU), the notion of novelty is, let’s say, “broken down” into more specific requirements. In other words, in order to be protected, an industrial design should:
- be New, not previously disclosed worldwide – see above;
- be Original, it must be independently created. In other words, it cannot be a copy or an imitation of other designs;
- have Individual Character, it must produce a unique overall impression on an informed consumer, different from the overall impression caused by other pre-existing designs.
The term of protection of industrial designs vary from country to country. In some countries, they can be protected for a total of 10, 14, 15, 25 years. You should check the term of protection in your country and in the countries where you want your industrial design to be protected.
Industrial design and other IP rights
Like trademarks, industrial designs may overlap with other IP rights.
Industrial Design and 3D Trademark
An industrial design will be protected if it meets the legal requirements of novelty and individual character at the time of filing. The protection granted by a design extends to the shape, lines, and contours of a product to which it is incorporated or applied. A 3D trademark will be granted protection if the product can be considered as a sign which distinguishes the applicant's goods from those of others in a similar business.
It is possible for example to protect packaging as both a trademark and a design if they meet the corresponding legal requirements: a novel shape becomes synonymous with a company's goods and may then be registered as a trademark as well as being protected by a design on the grounds of its individual character and novelty.
Industrial design and patent
A patent covers the function, operation or construction of a new product or process while an industrial design covers only the external appearance of a product.
What are geographical indications?
Geographical indications (GIs) are signs (words or symbols) used to indicate that a product originates from a given country, region, place, and that its quality, reputation, or other characteristics are essentially due to its geographical origin. The following products are the common types of GIs:
- agricultural products
- wine and spirit drinks
- industrial products
Please be aware that not all countries offer a sui generis system of GI protection and that some countries do not allow protection of handicrafts as GIs.
From the above definition, it is clear that three elements must be present in order to qualify for GIs:
- It must be the geographical name of a country, region, or area.
- It must serve to designate a product originating from that country, region, or area.
- There must be significant qualitative link between the product and the geographical area.
Exactly like trademarks, GIs are distinctive signs. However, there are also some striking differences:
- In terms of ownership, GIs, unlike marks, do not distinguish the products or services of one or more undertakings (natural persons or enterprises), but they identify goods (and very seldom also services) originating from a particular geographical area. This means that all enterprises operating in that geographical area, and complying with the required qualitative standards, are entitled to use the GI, often in conjunction with their own marks.
- In terms of quality, GIs, unlike marks, imply the compliance with specific qualitative standards. These might include natural factors (such as the soil, the air, the climate, etc.) and human factors (such as the methods of production or manufacturing).
By way of example, KAMPOT PEPPER from Cambodia is a GI that can be used by all producers of the exquisite Cambodian pepper grown in the southern region of Kampot. Only companies operating in that region may be allowed to use the GI Kampot Pepper, and only if they comply with the qualitative standards established by the association of producers that owns the GI.
What are the functions of geographical indications?
The main function of GIs is to inform consumers of the origin of certain products and to prohibit their use by undertakings not based in the relevant geographical area and not complying with the required qualitative standards. As such, GIs may represent a crucial factor in determining or influencing the choice of the customers, particularly when a particular geographical place is linked to an image of quality.
You should therefore check the GIs existing in your country, and if you happen to produce your products exactly in the geographical area referred to by the GI, and you comply with the required qualitative standards, then, you will be entitled to use the GI and this might be an important step towards your commercial success.
What is a patent?
Patent is a wide and technical subject matter that would probably deserve pages and pages before you can claim a sufficient level of knowledge, and even more to draft a patent. As in many developing countries, there are not very many local patents that are filed by ASEAN SMEs in the region.
For this reason, this module will only provide you only with the knowledge that you need to identify a possible problem and establish the general approach to solve it, on the understanding that you will inevitably need to appoint a patent expert to help you.
Most importantly, you have to remember that even though you may not have the necessary financial resources to carry out extensive research and development (R&D) to come up with a revolutionary technology, you may still invent every day, by improving the way in which you operate in your business, by improving the tools that you use, etc. Also these smaller but valuable inventions may deserve protection as petty patents or utility models.
This module will essentially explain the concept of patents, briefly describe the legal characteristics for the validity of a patent in general.
If you consider that an “invention” is nothing but a technical solution to an existing technical problem, it becomes clear that a “patent” is the legal title that give you exclusive rights over that particular invention. Exactly like trademarks, patents are also governed by the “principle of territoriality” and therefore they enjoy protection in a given country only if they are duly filed and registered in such country.
What a patent is NOT:
It does not protect the name of your invention or of your products or services.
It does not protect the ornamental shape of your products.
What can be patented?
In order to be patented, an invention must:
- Refer to a patentable subject matter: this seems very technical, but in reality you just need to take your patent law and make sure that your invention does not fall into one of the areas for which patents cannot be granted in your country. By way of example, in numerous countries, discoveries, scientific methods, mathematical methods, methods for doing business, plants and animals are not prohibited from being patented.
- Be new: your invention cannot be “part of the prior art”. This technical expression in reality simply means that your invention is not new if it was already disclosed to the public anywhere in the world by way of written or oral disclosures. For example, you will not be able to obtain a patent on an invention that (1) it is the subject of a prior or earlier patent, or (2) if the invention was described in detail in a conference, a study, an assessment, or (3) your proposed invention was already used by someone somewhere around the world.
- Have industrial applicability: this means that your invention must be useful and capable of being reproduced on a large scale (by any industry).
- Have an inventive step: your invention will possess an inventive step if it cannot be considered as obvious for the “person having ordinary skills in the art”. In other words, you have to stand in the shoes of somebody who holds same level of expertise in the relevant field of technology and ask yourself if that invention represents a real technological advancement as compared to what already exists.
- Be fully disclosed: when filing a patent, you are obliged to describe and provide all details of your invention, otherwise the patent will not be granted or it can be canceled at any time. Some countries require applicants to disclose also the “best mode” to carry out the invention.
If your invention complies with all the requirements described above, it will be granted a patent. Having a patent means that potentially for 20 years you are the only person/company that can exploit that technology in that particular country. But remember, the maximum duration of a patent is 20 years (and it cannot be renewed after that). However, every year you will have to pay annual fees or annuities to maintain the validity of your patent.
What are trade secrets?
The other alternative to protect an invention is by keeping it … secret. These are the so-called Trade Secrets—confidential business information that have a commercial value, precisely as they are secrets. The problem is that their protection will only last until they remain secret. If a third party, without committing a crime or other violation of the law, simply finds your products on the market and understand your invention, your protection is gone forever.
This should raise big red flags for you, as the last thing that you want is to lose your invention after spending years and significant amount of financial resources to develop it.
It would be best NOT to use trade secrets to protect your main invention, but only the relevant commercial information that might render the exploitation of your invention easier.
What is copyright?
Copyright may be defined as an exclusive right given to authors of original creations in the literary and artistic domains.
This means that if your SME is not involved in the creative sector or entertainment industry in the broad sense, your interest in copyright may be limited. However, you should remember that any document you draft, any contract you sign, any advertisement campaign you design is in fact protected by copyright. We will therefore try to provide you only with the crucial concepts that you may need in your work. In other words: copyright in a nutshell!
As mentioned above, copyright refers to creations in the literary and artistic fields. These include music (of any type, from symphonies, rock and roll, to rap), art (of any type, from paintings, sculptures to graffiti on a city wall), written works of any type (poems, novels, stories, etc.). The list continues with photographic and cinematographic works, maps, software, architectural works, etc.
The only legal criterion of copyright protection is ORIGINALITY. A given creation will therefore qualify for copyright protection if it is the original expression of its author. In other words, there will be no originality if the author has copied somebody else’s work.
The good and bad news is that there are no formalities to obtain copyright protection for your creations: you just need to … create them. In some countries, you also need to fix them in a tangible form (e.g., a music will be protected only if it is recorded on a disk or other material support, but not if it is only sang by its author). This is good news as there are no costs involved, no examination, no delays to obtain the protection. However, the bad news is that this makes copyright protection quite vulnerable and difficult to prove. In order to facilitate your burden of the proof, we would suggest to proceed with a straightforward deposit with your local copyright office, or even more simply, just put your creation in an envelope and send it to yourself by registered post. In both cases, you will have the evidence that as of a certain date (the date of deposit or of the sending of the registered letter) you are the owner of that work of art (however, remember that this is just a simple presumption).
Another peculiarity of copyright is that it does not provide you only with economic rights (such as the right to control the copying, the reproduction, the public display, the renting, etc.), but also with a set of moral rights. These include the right to claim authorship over the work, the right to prevent distortions or mutilations that may adversely affect your reputation, and the right to withdraw the work from the market. These rights will remain with the author even if all economic rights are transferred or assigned to third parties.
The economic rights linked to copyright last for the entire life of the author and 50 years (or more in some countries) after author’s death. Moral rights are normally forever.
Just one small tip: every time you produce a written document designed for public consumption, you may want to remember to add a short copyright notice at the end. This could simply consist of the symbol ©, followed by the indication of the year in which you produced that document and the name of your company. This does not create rights, but it is a good warning sign for possible competitors that may be tempted to copy you.
What are related rights?
By now, you understand that copyright is the best tool to protect authors of creations in the literary and artistic fields. However, how do we protect the actors and dancers? Actors, singers, dancers, and in general, performers of all types are certainly not authors, and therefore, they cannot enjoy copyright protection. At the same time, their intervention is fundamental to allow all of us to enjoy the artistic or literary work created by a certain author (be it a song, a movie script, a poetry, etc.). Without them we may not have access to these creations and undoubtedly their skills play an important role in our appreciation of those works. For this reason, related rights or neighouring rights exist.
Related rights protect the interests of those that act as “intermediaries” between the authors/creators and the public, to enable the authors to present their work to the public. Whereas copyright protects the rights of the author of the original work, related rights protect those who communicate the original work to the public against the illegal use of their contributions in the process of communicating the work to the public. This also explains the name related rights—these are rights that relate to copyright.
The performers cannot claim exclusive rights over the notes and the musical partition that they are singing (as these were written by somebody else, the author), nor over the script of the movie which they are interpreting (that again was written by somebody else). However, they are entitled to claim exclusive rights over their particular performance of that musical partition or in the latest movie.
There are essentially three categories of beneficiaries of related rights:
- Performers: their exclusive rights cover their performances, to make sure that nobody could simply record their performance and reproduce it endlessly without their permission. This would quickly make them unemployed!
- Phonogram producers: their exclusive rights cover their phonograms, i.e., their discs. These are the individuals (or companies) that invest significant financial resources to produce the musical records and they want to make sure that nobody simply reproduces thousands of their CDs without their permission. This might easily make them bankrupt!
- Broadcasting organizations: their exclusive rights cover their radio and television programs, to make sure that other TV or radio stations do not simply record their programs and retransmit them without their permission. They will lose income!