A UAE based company comes up with a new bottle design for their shampoo product. Is the bottle design protected by the laws governing: (a) trademark; (b) patent; (c) copyright; (d) trade secret, or is it (e) all of the above?
The correct answer is (e); the bottle design is capable of being protected at least in theory under all four areas of law.
Trademark, patent, copyright, and trade secrets fall under the umbrella of Intellectual Property ("IP") law. All IP laws have the protection of human innovations as their common denominator. However, the various sub-categories of IP law may be distinguished from each other as follows:
- Trademark law protects any mark, including words, pictures or signs, used to distinguish a person's goods and services from those of their competitors. In lay terms, it refers to branding. For example, the "Starbucks" brand name and mermaid logo are trademarks of the Starbucks coffee company.
- Patent law protects inventions, particularly those which are useful in an industrial or commercial context. Famous patented inventions include the light bulb and the automobile. Within the patent law category, there are utility models and industrial designs. Utility models are those inventions which cannot meet the inventiveness threshold of a patent and instead provide minor improvements on existing inventions. Industrial designs are inventions of an aesthetic or ornamental kind.
- Generally, copyright law protects any original work in the areas of literature, the arts or science, whatever its description, form of conveyance and expression, significance or purpose. However, certain types of original work do not qualify for copyright protection for example: (a) ideas and discoveries – these are normally covered by patent law instead; and, (b) names and slogans – which are afforded protection under trademark law rather than copyright.
- The law on trade secrets protects any confidential information which belongs to a company and gives it a competitive edge. For example, the trade secrets of a perfumer would be the unique formulas for the perfumes. Although some of the ingredients of the perfume might have to be disclosed due to health and safety or other regulations, the overall formula would be a closely guarded trade secret.
For the most part, the above sub-categories of IP maintain distinct areas of coverage, but there are many situations in which the lines will be blurred.
Copyright and Trademark
If we take the example of packaging design and labels on a
consumer product, we note that it consists of artistic and verbal
expressions and may therefore be subject to copyright. The
packaging and labels will also no doubt include the
manufacturer's logos and the brand name of the product and in
this way may be protected by trademark law.
Trade secret and Patent
Often an inventor will seek to patent his invention. However, it usually takes many months if not years for an invention to be ready for patenting. If someone else brings the invention into the public domain before a patent application is filed, the original inventor's subsequent patent application will be rejected for lack of novelty. There will be no legal recourse against the other party, unless the original inventor can prove the latter had access to his invention and copied it. Therefore, in the time before a patent application is filed, the inventor will need to its secrecy.
Patent, copyright, trademark and trade secret
If we go back to our original question regarding the new bottle shape, we find that there four potential avenues available to the manufacturer.
Firstly, while the bottle shape is under development and prior to its launch to the public, it would need to be kept a trade secret.
Secondly, it may also arguably be subject to protection under
copyright as a work of applied art. Much would depend on the design
in question. In some jurisdictions, such as the US, works of
applied art are distinguished from industrial designs. While the
former are copyrightable, the latter are not. The difference
between the two is whether the design aspect can be separated from
the functional aspect of a "useful article". If the
answer is yes, it will be afforded protection by copyright. No such
"separability test" has yet been developed in the UAE
law, however it is safe to assume that similar principles would
ultimately be relied on in that copyright applications for applied
art will be subject to more scrutiny than applications for fine
art. Registration is not necessary for copyright but can ease the
burden of proof in the event of dispute over who owns the
copyright.
It would also be possible, although difficult, to register a bottle
design as a trademark. The bottle design would have to be
inherently distinctive or have acquired distinctiveness over time.
Very few bottle shape designs or indeed any other functional
product designs can be said to be inherently distinctive to the
consumer as a source identifier. The average consumer does not
usually regard the shape or other functional aspects of a product
as indicative of its origin. Therefore, invariably, functional
designs would be registered as trademarks only on the basis of
acquired distinctiveness. This is proved by submitting evidence
that over the course of time, the functional design has achieved a
distinctive association with the manufacturer in the mind of the
consumer through intensive marketing. The most famous example of
such acquired distinctiveness is the Coca Cola contour bottle shape
which is a now registered trademark (or "shape mark") in
many jurisdictions. The great advantage of a trademark registration
over other types of IP rights is that it can be renewed
indefinitely, giving the trademark owner permanent exclusivity over
the mark in question.
The bottle shape could also be registered as an industrial design.
Once granted, industrial designs, like others in the patent family,
are not permanent; they expire after a certain period of time,
whereupon the inventor or designer loses the exclusive right to
commercially exploit the design. Unlike copyright or trademark
rights, however, the functionality of the design is less of an
issue. However, if the design is dictated by functional
requirements, it will be more appropriate to register it as a
utility model rather than an industrial design. For the purposes of
this article, we will assume that our shampoo manufacturer has
designed a bottle shape which is not dictated by functionality and
is therefore capable of being registered as an industrial
design.
FAST FACTS
IP Protection for bottle shape
|
IP Law |
Available ? |
Comment |
|
Trade Secret |
√√ |
Protection available before being released to the public.Reasonable precautions must be takento safeguard the design from unauthorised disclosure. |
|
Copyright |
? |
Possible if highly ornamental design, although very unlikely. |
|
Trademark |
? |
Application for trademark registration before product is marketed - possible if highly ornamental design, although unlikely. |
|
Design patent ( Industrial Design) |
√ |
very likely to be granted. The key reguirement is novelty. functionality is not an abstacle unless it dictates the design ( in which case, a utility model application will be a more suitable option |
Conclusion
The shampoo manufacturer in our case study would be advised to take the following steps:
- During the design development phase, the manufacturer should take reasonable measures to ensure that the bottle design is kept confidential in order to preserve its status as a trade secret;
- As soon as the design has been finalised, the manufacturer should apply to register it as an industrial design. This is because functional designs are accorded protection under this area of IP law more easily than under copyright and trademark law.
- Once the product has been marketed to the public for a significant period of time, and acquired distinctiveness, the manufacturer should file an application for registration of the bottle design as a trademark. It is important to obtain trademark protection since an industrial design has a limited lifespan, while a trademark registration can be maintained in perpetuity (subject to payment of renewal fees and continued use).
It is not recommended for the manufacturer to go for a copyright registration, since it is unlikely to be granted or sustained.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
