The Design Indaba Expo that Capetonians flocked to over the
period 2- 4 March 2012 showed that product design is alive and well
in South Africa, although - somewhat predictably in a low-tech
economy - all the action appears to be in "soft" areas
like clothing, jewellery and furnishings: not a single car, cell
phone or TV - sexy or gross - was to be seen. The Expo did put a
rare spotlight on the legal protection available to product shapes.
The easiest and most obvious form of protection for product shape
is that poor, neglected stepchild of IP, the registered design -
not a lot of people know this, but it's possible (cheap and
easy too!) to get a design registration for a product shape
that's new (as in novel), and this gives the owner monopoly
protection for 15 years in the case of an aesthetic design, and 10
years in the case of a functional design.
Even fewer people know that it's also possible to protect a
product shape through a trade mark registration, but only if
it's non-functional. In this case, the shape does not need to
be new, but it must be distinctive. What this means in practice is
that you must be able to establish that your product shape's
been around a bit, that it's become synonymous with your
business, and that people have come to regard it as an indicator of
source. For trade marked product shapes think Mini Cooper,
Toblerone or Jeep Grill. A trade mark registration can, of course,
be renewed indefinitely. So what to do? If your design's brand
new, it's a no-brainer, you go for a design registration. If
your design's old hat but synonymous with your business, try
the trade mark route. If your design's neither new nor well
established, you deserve what you'll get - nothing. But what do
designing men and women do? Well these smart people:
Get a design registration for their new design;
They enjoy the 15-year monopoly protection period, and use that
period to establish the product, highlighting in their marketing
material that the shape is key;
They then get a trade mark registration for the now
well-established and recognised shape, allowing them to create a
perpetual monopoly. Nice!
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