Registration of an industrial design: how to protect the appearance of products

Today it is difficult to estimate the scale of counterfeit products turnover in the consumer market. Since the vast majority of consumers do not have special knowledge to distinguish the original product from its counterfeit, the risk area is those manufacturers whose products are in demand. Therefore, the protection of a product from counterfeiting lies mainly on the shoulders of the manufacturer.

As a rule, the first thing the consumer pays attention to is the packaging of the product and its appearance, so it is worth paying due attention to the protection of the product’s appearance.

We will tell you what can be done to protect your packaging and, accordingly, the brand.

How to protect goods from counterfeiters?

Usually, protection of products from counterfeiting centers on protection of the brand - the manufacturer’s trademark. Indeed, the trademark allows consumers to identify a particular company on the market, and the product’s logo serves as a kind of signal to the buyer.

But there may be a situation when a third party will put its own logo on the product, while the appearance of the product will be almost identical to that offered in the market by the original manufacturer.

In this situation, you can register the design of the product as an industrial design.

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Legal protection of industrial designs

An industrial design is the appearance of the product, which is determined by the form, contours, color, texture, material, drawing, etc.

In this case, the following are not subject to protection:

  • objects with unstable form (liquid, gas, bulk materials, etc.);
  • parts of complex structures that are “invisible” to the end user;
  • products whose appearance stems from its technical functions;
  • products designed to connect parts of complex structures, whose shape is based on their purpose.

The main criteria for the protection of an industrial design are as follows:

  • novelty (the product is not identical to any of the existing industrial designs);
  • individual character (a “wise user” does not confuse this industrial design with existing designs).

Our specialists will help you to determine in advance whether you can register the appearance of your product as an industrial design, as well as provide recommendations on additional changes to avoid rejection of registration.

The right of the industrial design owner is confirmed by the certificate of industrial design registration, which gives the following rights:

  • the exclusive right to use the industrial design in any possible way, provided that such use does not infringe the rights of third parties (for example, the manufacture of products using the design, the offer of such products for sale, import, export, etc.);
  • the right to prohibit third parties from using the industrial design;
  • the possibility of protection against unauthorized copying and imitation of the industrial design, including by removing counterfeit products from circulation and claiming compensation;
  • transfer of the right to use the industrial design to third parties.

If you discover an infringement of your design, our experts will help you develop a protection strategy and restore your violated rights.

You may also like: How To Protect Your Brand Without TM Registration?

How to register your industrial design in Ukraine?

To register an industrial design it is necessary to apply to Ukrpatent with relevant materials/documents (including, in particular, images of the product, its description, information about the author and the applicant), as well as to pay necessary fees and charges.

Standard period for consideration of an application for industrial design registration is 7-10 months. 

Note: You can apply to Ukrpatent with the corresponding application for acceleration of consideration of the application up to 2.5-3 months. Our lawyers can prepare such an application for you and monitor its implementation.

Please note! Validity period of property rights of the industrial design certificate owner is 5 years from the date of filing an application. Thus, before the expiration of this period the applicant may extend it for 5 years once or several times. The total period of validity of property rights for industrial design may not exceed 25 years from the date of application. 

Our law firm provides the service for keeping records of registered industrial designs and other intellectual property objects in order to ensure that the actions to extend the validity of such objects are made in time. 

If you need help with registration of your industrial design or with its subsequent protection, don’t hesitate to call us. We can help you quickly and easily.

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Publication date: 16/09/2020

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