Industrial design contains aesthetic and decorative
characteristics that, without directly affecting profits, provides
a particular attraction that can be the determining factor in
someone selecting one product over another. As a result, it
represents important Intellectual Property to protect.
According to the rulings in the Decisión Andina number
486 from 2000, the only absolute requirement for a design to merit
Intellectual Property protection was its novelty. Other criteria
that were also mentioned were the need for elements of the design
to be visually unique, having a special appearance, and with a
specific functional utility.
Nevertheless, since 2002, the Tribunal Andino has reiterated
several times that, although the Decisión Andina number 486
from 2000 doesn't expressly state it, factors that determine
whether trademarks included in articles 135 and 136 can or cannot
be registered should also apply to industrial designs. As a result,
these designs should not only be novel, but they should also
contain unique distinguishing features in the interest of
protecting consumers and local businesses.
This declaration by the Tribunal Andino is reasonable if it
takes into account that both industrial designs and trademarks
(especially those that contain a symbolic or 3-dimensional element)
are visually discernible. By the same token, the consumer, who by
his nature is may be uninformed, could mistakenly confuse one
product or brand with another.
For example, if a consumer goes to a chain store and products or
trademarks are similar, he or she may mix up one brand with another
with a similar look that may be protected under Industrial Design
law. This could confuse the consumers, going against market
transparency and consumer rights. They can jump to the erroneous
conclusion that the two products come from the same company.
The Superintendence of Industry and Commerce has, in fact, taken
steps and in several cases has chosen to search for trademark
precedents prior to coming to a decision. The idea is to determine
if the design being reviewed can be confused with a
three-dimensional design that has been previously registered.
In a similar vein, there have been searches for industrial
designs when seeking to register a three-dimensional
These searches were implemented by the SIC for the purpose of
giving consent to the guidelines agreed upon by the Tribunal
Andino. However, there are still some missing pieces to the puzzle.
For example, what happens to trademarks that are not
three-dimensional and are confused with industrial designs? We need
to remember that industrial designs can be three-dimensional or
two-dimensional, and all trademarks that contain symbolic elements
can be graphically similar to industrial designs.
On the other hand, in order to violate a registered trademark,
it not only needs to be easily confused with another brand, but it
also needs to represent (directly or indirectly) a related product
or service. This brings into question whether this same factor
should be taken into account with industrial designs based upon the
Taking into account all of the aforementioned information, it is
advisable that businesses seek expert counsel in the areas of
trademark and industrial design. Legal professionals will recommend
conducting searches for antecedents, whether it relates to
industrial designs or trademarks. The goal will be to protect
companies from future problems and avoid possible fines related to
third party rights. At the same time, they will be contributing to
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.
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