Protecting a Design - Copyright, Industrial Design or Trademark

By: Elias Borges, patent & trademark lawyer.

The three dimensional shape or design of an item is often a key ingredient in its commercial success. Products, particularly consumer products, which are visually appealing tend to do better in the marketplace then products who’s design is purely utilitarian. For example, desk top computers manufactured by Apple computers often have a stylish design which is dictated by aesthetics rather than function. Indeed, the commercial success of many products is often due more to its aesthetic design than its functional design. It is not surprising therefore, that most corporations take pains to protect the aesthetic appeal of their products.

There are three legal vehicles for protecting the three dimensional shape or design of a product: Copyright, Trade-mark and Industrial Designs. Industrial Designs are often the most straight forward. Industrial design protection affords the owner of a novel design a monopoly on the design for a period of 10 years. Furthermore, registering that protection is relatively straight forward. An industrial application is filed along with the filing fee, and a registration is usually granted within several months. The industrial design application is often little more than a series of drawings (or photographs) of the item taken from a variety of angles. Decorative or visually appealing designs can be protected. Designs which are dictated solely by their function cannot be protected in this way.

Protecting a design as a trademark may be likewise simple. If the design is primarily used to identify the source of the goods (i.e. product), the design may be protected by simply filing a trademark application. The design of the Coca Cola bottle is a famous example of a three dimensional trademark design (referred to as a distinguishing guise). Unlike an industrial design, a registered trademark does not have a limited life, although it is subject to renewal every 15 years. Functional aspects of the design are not protectable as trademarks.

It is possible for a three dimensional design to be afforded common law trademark protection, providing the design is famous and providing the design acts to identify the source of the product. Designs which are functional or purely decorative or designs which are generic in nature cannot be protected. Of course, proving that a particular design is worthy of common law trademark protection is often a difficult task. Therefore, registering the design as a trademark is advisable.

In some circumstances, a three dimensional design may be afforded copyright protection. If the work is artistic (a sculpture for example), then it is subject to copyright protection. However, if the item is mass produced by an industrial process, then copyright protection may not be available and industrial design protection should be sought. Also, in order to infringe the copyright of a design, the allegedly infringing item must be an actual copy of the protected design. It may not be an infringement of copyright to produce a competing product whose design was “inspired by” rather than “copied from” a particular design.

In the final analysis, the nature of the design will dictate the best mode of protection. Distinctive packaging designs are best protected by registered trademarks. Decorative designs applied to consumer products (furniture, appliances, etc.) are usually protected as industrial designs, and works of an artistic nature are best protected with copyright. In many cases, overlapping protection is available.