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A design protects the outside aesthetics appearance conferred to an object by its shape, configuration, outlines, patterns, decorative elements, material (as well as any combination of these elements).
In most countries, notably in Switzerland, United States and the European Community, a design can be protected via a registered design, an official title delivered by the Intellectual Property Office of the country. To obtain this official title, it is necessary to file a request for registration of a design with the national/regional Office of Intellectual Property.
There are differences in national laws governing the registration of the design, the scope of protection of the registered title and duration of protection, as well as in their application. The title of the right granted also varies between countries, e.g.”design patent” in the United States, “Geschmacksmuster” in Germany.
In certain jurisdictions, notably in the European Community and in United Kingdom, there exists also a form of protection (under certain conditions and in a more limited manner) for non-registered designs « unregistered design rights ».
To be protected, a design must satisfy three basic criteria:
– novelty: a design is not novel if an identical design has been made available to the public before the filing date.
– Originality: a design must differ from previous existing designs by major characteristics belonging to the overall impression given by said design.
– Conformity to the law and morality: a design must not be contrary to either law or morality.
The above criteria for registration reflect the laws of many countries. However, there are national differences in these laws and their application. Many offices of intellectual property (including Switzerland) do not check, during the examination of the application for registration, if these criteria are met.
! In Switzerland, for a design not to be novel, it is also necessary that the people belonging to the specialized circles in the field concerned in Switzerland could have had knowledge of the identical design. Moreover, the holder of the design may disclose his design till up to twelve months (grace period) preceding the date of filing of this design without destroying novelty. A grace period is also allowed in some other countries (including the European Community and the United States).
The holder of a registered design has the right to prevent any third party from using, for industrial purposes (e.g. manufacture, storage, offer, import, export, transit), an object in which the design concerned (or a design that does not differ significantly from the latter) is incorporated or to which it is applied, in the country where the design was registered, during the period of validity of the registered design. The registered design is protected against both deliberate copying and the independent development of a similar design.
The level of protection described above reflects the legal provisions in many countries. However, there are national differences in these laws and their application.
Protection of unregistered design (only possible in certain jurisdictions, notably the European Community and the United Kingdom) gives its holder a more limited level of protection. In particular, an unregistered Community design confers on its proprietor only the right to prohibit the copy of said design.
The scope of protection is defined by the representation(s) provided at filing.
Principle of territoriality: a design has an effect only in the country in which it is registered and in force. Outside this territory, anyone can use the design (subject to other rights which could protect against the use of the design, including unfair competition, copyrights, or unregistered design rights).
For a registered design: 5 years minimum, 25 years maximum (five periods of five years each).
The duration of protection mentioned above reflects the legal provisions in many countries. However, there are national differences in these laws (for instance United States 15 years (filed on or after May 13, 2015), China 10 years).
An unregistered Community design protects the design only for a period of three years from the date on which it was disclosed to the public for the first time in the European Community. An unregistered UK design protects the concerned design for a maximum of five years from the date on which a product incorporating the design is placed on the market for the first time (or ten years from the date of creation of the design (manufacturing or description of the design in a document), if the design has not been placed on the market during the first five years). For an unregistered UK design, there is a supplementary period of protection of five years during which any third party has the right to an automatic license for the manufacture and marketing of products incorporating the design.
A consumer’s decision to purchase is largely conditioned by his sense of aesthetic trends. Creating designs may require a significant investment. The registered design allows the holder to have an exclusivity on the overall outside appearance of his products. Therefore, design protection is a way to preserve this investment.
Design is a transferable propriety (cession or licensing).
Special conditions apply however to the registration of a new holder for the international Design (the Hague System).
In most countries, laws on designs do not require that items subject to a filed design are marked as « filed ». It is recommended however that a notation such as « registered design », followed by the number of the corresponding design application to inform the public.
However, an abuse identifying a design for an article as having been filed in a country, while it is not the case, is punishable.
Filing of a first design application (called « basic » or « priority » application) is made to an Office of Intellectual Property.
The choice of the Office for the first filing will depend on many criteria such as the residence of the applicant, the market for the protected product, national laws, the budget of the applicant, etc.
A Counsel in Intellectual Property will assist you in these filing steps (see « What is the role of a Counsel in Intellectual Property ? »).
Before the expiry of a period of six months from the basic filing date (called « priority »), the holder has the option to extend the geographical scope of design protection.
Various routes of protection are possible and some (non-exhaustive) examples are represented on the enclosed diagrams.
– First filing in Switzerland, European Community (not including Switzerland), United States, or International Registration (The Hague system) ;
– « Extended » filing within six months from the first filing By the filing of one or several national/regional applications for registration (for instance, in France, Italy, European Community or United States, etc.) and/or an International Application for Registration (covering 65 countries on 15.04.2016).
Due to the complexity of the procedures, of the various possible routes of protection, it is recommended to consult a Counsel in Intellectual Property already in the initial phases of the project to establish a solid strategy of protection.
– Only the owner of a design can file an application and obtain the registration of a design. If the designer was commissioned to develop a design for the account of another person, this is this person who is the owner and only this person can file an application for a registration, the name of the designer is, however, mentioned.
– Formal requirements regarding the representations of the design exist (sufficient contrasts, clear outlines, neutral background, reproduction showing single object, etc…)
– Several representations of the design can be filed within the same filing.
– In several countries, notably in Switzerland and the European Community, several designs belonging to the same class of products (Locarno classification, 32 classes) can be filed within the same filing.
– A description of the visual aspects of the design can be added*.
The above formal criteria of registration reflect legal provisions in many countries. However, there are national differences in these laws and their application.
However, laws of some countries, including the United States, China, India and Japan, only allow a single design per application.
Protection relates to inventions. The subject matter of these inventions concerns both entirely novel objects (process, device, apparatus, method, compound, material, formulation, etc.) and non-obvious improvements to existing inventions.
To be patentable, an invention must satisfy three basic criteria:
– Novelty: An invention is considered to be novel when it has never been made publicly available in any form (written, public conference, radio broadcast, internet, etc.), irrespective of the language, anywhere in the world.
! To preserve potential patentability of your invention: never disclose the invention non-confidentially prior to filing your patent application
– Inventive step: An invention is considered as involving an inventive step if, for a person skilled in the art, it does not derive from the known prior art in an obvious manner.
– Industrial application: An invention must be able to be used, executed and reproduced industrially.
The above criteria of patentability reflect the legal provisions of many countries. However, there are national differences in these legal provisions and in their application. Some intellectual property offices (such as the Swiss Institute) do not verify, during examination of the patent application, whether these criteria are fulfilled.
The owner of a patent has the right to prohibit all third parties from exploiting his invention(e.g. making, sale, offer for sale, import, use) in a country where a patent has been granted for said invention, throughout the duration of the patent.
The extent of protection is defined by the claims of the patent as granted.
Principle of territoriality: A patent has an effect only in the country in which it is registered and in force: outside this territory, anyone can freely exploit the invention.
Maximum 20 years (+ a possible extension of up to 5 years for drugs and phytosanitary products depending on the date of granting of the patent and the first date of marketing approval).
Utility of a patent:
– Allows “exclusivity” on the technology employed in products or commercialised processes (differentiation of the products relative to those of competitors)
– Provides a marketing tool – provides visibility and image associated with innovation
– Provides a tool for negotiation in collaborative projects with outside partners or with respect to trading partners (distributors, suppliers, manufacturers)
– Converts technology into an intangible property right forming part of the assets of the company (increases company value)
– Provides an element for evaluating the innovative character of the R&D function of a company
– Facilitates fund-raising, especially for “start-ups”
– Is a potential source of revenue (assignment, licenses)
The procedure for obtaining a patent starts with filing a patent application with the Intellectual Property Office of the country where protection is sought. This application will then be examined by the Office which will decide on the opportunity for granting a patent for the concerned invention.
The claims of the granted patent determine the scope of patent protection.
! A patent application does not necessarily result in a granted patent with a scope identical to the original patent application.
The owner of a patent can initiate an infringement procedure of his patent with the competent Court only after the patent is granted.
In the majority of countries, patent law does not require that patented articles are marked as “patented”. However, it is recommended to mark the objects as “Patent pending” or “Patent application filed” or or “Pat. Pend.” followed by the number of the corresponding patent application, or marked as “patented” followed by the number of the corresponding granted patent, to inform the public.
However, any attempt to identify, in a country, an article as being patented, while this is not the case, is punishable by law.
A first patent application relating to an invention (known as “basic” or “priority” application) is filed with an Intellectual Property Office.
The choice of the Office for this first filing will depend on numerous criteria such as potential economic impact, the need for rapid evaluation of patentability by an official entity, the language chosen for filing, the country of residence or nationality of the inventors, the country where the invention has been made, the budget of the inventor during the first year, etc.
In exchange of the exclusive rights to the invention conferred to the owner of the patent, the law requires that the applicant provides a sufficiently detailed description of the invention at filing of the patent application to allow third parties to execute the invention, with the aim of allowing progress in science and economy via public dissemination of technological knowledge.
! Consequently, technical aspects which are crucial to the operability of the invention should not be omitted from the description of the invention.
A Patent Attorney will help you with these steps of drafting and filing a patent application (see heading “What is the role of the patent attorney?”).
In some countries, for example the United States, the law sets an obligation to file the first patent application relating to an invention with their national Office of intellectual Property for an invention made in their country, or as long as one of the inventors is a national or resident of their country.
Prior to the expiry of a one-year period from the date of the first filing (known as “priority year”), the owner has the possibility of extending the geographical scope of the protection of the inventionby filing one or more national/regional patent applications or an international application covering the countries where protection of the invention is sought.
Various routes of protection are possible and some (non-exhaustive) examples are illustrated in the attached diagrams.
– First filing with the Swiss, European (including Switzerland) or US Patent Office;
– “Extension” filing within the priority year by filing one or more national/regional applications (e.g. Europe, United States, etc.) and/or International application (covering 146 States on 07.09.2012).
The choice of the protection route will depend on many criteria such as the countries where the applicant (or possible licensees or assignees) and competitors are active (current or potential activity), the potential economic impact of the invention, the budget of the applicant, etc.
A patent application is structured as illustrated in the attached diagram.
Since patentability of the invention depends on the known prior art, a preliminary search to determine the closest prior art can be preferable (see file “Prior art search”).
Concrete realisation of an invention is not an absolute prerequisite for filing a patent application. However, the description of the invention in the patent application must provide credible and substantial support for ascertaining that the criteria for patentability are properly fulfilled. It is the “workable” character of the invention which will be examined by the patent office on the basis of the information supplied by the inventor within the text of the patent application.
The choice of the appropriate moment for filing is important in working out a protection strategy. The following considerations are important:
– avoiding that competitors file on the same subject matter, or avoiding disclosure of the invention prior to filing of the patent application, which would deprive the invention of novelty and, hence, patentability;
– taking into account the impact of a premature filing, which would risk a rejection due to insufficient description, or which could lead to a limited scope of protection.
Due to the complexity of the procedures and the various possible routes of protection, it is recommended to consult a Patent Attorney, already starting from the initial phases of the project so as to put a solid protection strategy in place.
Protection relates to registered signs within the category/categories of products and/or services (classes) for which they have been registered.
In general, all signs capable of graphic representation may be used as trademarks when they are used to distinguish the products or services of a business from those of the competitors.
Several kinds of individual trademarks exist:
– Word trademark: a typewritten trademark (normal font), containing no specific graphic element, that protects the trademark itself, without any figurative element (words, combination of letters or numbers)
– Semi-figurative or combined trademark: protects the association of a word element and a visual element (e.g. graphics used to write this trademark, pictogram or logo in association with a name)
– Figurative trademark: protects the figurative element (logo)
– Shape or three dimensional trademark: protects a three dimensional shape (container, packaging, product)
– Colour trademark: protects one or several colours, independently of the shape or configuration
– Others: sound, olfactory, hologram, slogan, etc.
Other categories of trademarks also exist:
– Collective trademark: distinguishes the products or services of a group of companies. A regulation identifies the group of companies authorized to use the trademark.
– Guarantee mark: sign used by several companies under the control of its owner to ensure that all products or services have certain properties (e.g. quality)
The categories of the above-mentioned trademarks correspond to legal provisions from numerous countries. However, there exist national differences in the categories of possible protection due to both legal provisions and case law.
In certain countries, there exists a form of protection for the trademarks said to be “famous” which extends beyond the products and/or services similar to those for which they have been registered, and/or a form of protection of the signs which have not been registered.
There exists national differences in the kind of trademarks which can be protected. In particular, three dimensional trademarks, colour trademarks and sound, olfactory, hologram trademarks cannot be protected as trademarks in certain countries. For instance, in Switzerland, olfactory, gustative or tactile trademarks cannot be registered since it is considered that they cannot be represented graphically.
To be eligible for registration, a sign must satisfy the following basic criteria in the class(es) for which an application has been filed:
– Have a distinctive character
– Have a non-descriptive character
– Must not be deceptive: does not falsely describe the source, geographical origin, content or quality of the goods/services
– Absence of conflict with identical or similar trademarks which have been registered before for identical or similar products and/or services
– Shall not be contradictory to public order and morality
– Shall not be contradictory to law in force
The above criteria of registration reflect the legal provisions of many countries. However, there are national differences in these legal provisions and in their application.
Many intellectual property offices (including the Swiss Institute and the OHIM (community trademarks)) do not verify, during examination of the trademark application, whether an identical or similar trademark has already been registered.
The owner of a trademark has the right to prohibit all third parties from using an identical or similar sign to designate identical or similar products or services if a risk of confusion exists in a country where his trademark has been registered, throughout the duration of the trademark validity.
The extent of protection of a registered trademark is defined by the sign and the list of products and/or services (except for the “famous” trademarks.
Principle of territoriality: A trademark has an effect only in the country in which it is registered and in force: outside this territory, the trademark is not protected.
The above rights reflect the legal provisions of many countries. However, there are national differences in these legal provisions and in their application.
In certain circumstances the owner of a trademark can prohibit third parties from using a sign in relation with products and/or services not similar to those for which the trademark has been registered (this is the case for the so-called “famous” trademarks).
10 years (can be indefinitely extended by period of 10 years).
In most countries, the trademark law does not require that a filed/registered sign exhibits a specific mentioning. However, it is advisable to associate to a sign, the following mentioning:
– “TM” to indicate that the sign is used “as a trademark”, without necessarily having been the subject of a registration, for information
– “®” to indicate that the trademark has been registered with the official register of the country where it is used or that it is the subject of an international registration having effect in this country
There are national differences in the legal value of the “TM” mentioning.
Any attempt to identify, in a country, a sign as being registered, while this is not the case, is punishable by law.
Utility of a registered trademark:
– Allows to distinguish the products and services relative to those of competitors (provides visibility and supports a distinctive image)
– Provides a tool for negotiation with trading partners
– Constitutes a property right that can be transferred (assignment or licensing). Specific conditions apply to the registration of the new holder in certain protection systems (e.g. international filing)
– Is a potential source of revenue via licenses
Business names (company names) and domain names are distinctive signs like trademarks.
The company name is registered to the national (or Cantonal like in Switzerland) Trade Register, but its registration:
– Does not warrant that an earlier identical or similar trademark does not exist
– Provides geographically limited protection
– Offers a protection relatively limited against homonyms, notably in case of additions of figurative elements
– Requires lower level of distinctiveness as compared to trademarks.
The domain name is registered through accredited registrars (for example http://www.switch.ch/, for « .ch »), but the registration:
– Does not warrant that an earlier identical or similar trademark does not exist
– Offers a protection relatively limited against homonyms, notably in case of additions of figurative elements
– The content of the website is not always determining
– Can rely on the principle « first come first served » only in limited circumstances and a transfer of domain name may be requested in case of conflict.
The registration of the name as a trademark in parallel to the registrations of the corresponding domain name and/or the company name (if it fulfils the registration requirements) is highly recommended to benefit from a supplementary/complementary protection as a trademark, for preventing as much as possible any possible future conflicts.
A first request for trademark registration (so called « basic mark » or « priority founding ») needs to be filed at the qualified Intellectual Property Office for the chosen territory.
The choice of the Office for this first filing will depend on several criteria like the geographic use of the mark, the further filing strategy, the budget of the owner etc.
Since the existence of earlier registered identical or similar trademarks is not examined in some countries (including Switzerland and the European Community), an availability search, before the filing of a priority founding trademark,is recommended and will allow to define a strategy of protection and an optimized drafting of the list of products and services (see « Trademark searches »).
It is important that the owner accurately defines the products and/or services for in relation with which the trademark will be used. In order to ensure not only a scope of protection sufficiently large but also to reduce the costs associated to objections and potentially arising conflicts, the list of products and services should be drafted with utmost care. An Intellectual Property Counsel will be able to assist you in those steps of drafting and filing (see « What is the role for an Intellectual Property Counsel ? »).
Before the expiry of the six month period from the date of filing the basic trademark application, the owner has the possibility to extend the geographic protection of the trademark.
Various routes of protection are possible and certain examples (non-comprehensive) are represented on the attached schemes.
– First filing of a Swiss application or a Community application (does not cover Switzerland);
– « Extension » filings within six month period from the date of filing the first trademark applicationthough the filing of one or more request(s) national or regional for registration (for ex. France, Italy, Community or United States etc..) and/or an International application (covering 97 states on 15.04.2016).
Later designations of territories or a filing after the expiry of the priority date are still possible.
In a case where a geographic extension of the protection is envisioned through the filing of an international application, a basic filing in from an office of origin being part of the Madrid system is necessary. The Office of Origin is defined depending on whether the country where a protection is wished is a contracting party of the Protocol and/or Arrangement of Madrid. However, for any applicant with an effective and serious industrial or commercial establishment on the Swiss territory, an international application can be made on the basis of a Swiss basic trademark.
The choice of the appropriate moment for filing is important in the design of the protection strategy for the following reasons:
– One should avoid a competitor registering an identical company name/domain name that may acquire rapidly recognition or a trademark name identical or similar for the same classes of services or products, or that the sign becomes a common generic expression in the public domain and then loses its distinctive character;
– Measuring the impact of a premature filing which would expose the sign to a risk of cancellation for non-use after the expiry of the grace period for non-use.
Due to the complexity of the procedures and the various possible routes of protection, it is advisable to seek assistance of an Intellectual Property Counsel, already in the initial phases of company/web site internet creation and business communication in relation with a sign, in order to put in place a solid and consistent strategy of protection.
Use of the trademark: After the expiry of a grace period (5 years in the case of Switzerland)10, the owner has to use the registered trademark for the registered products and services, in the territory where the trademark is registered.
In absence of use of the trademark after this deadline, the owner is exposed to a possible action in nullity by third parties on the ground of lack of use after the expiry of the grace period, potentially leading to the cancellation of the registration.
The use requirements exposed above are legal provisions which are common to a lot of countries. Some national differences exist in the requirements regarding the use and the corresponding necessary proofs of use, though.
In many countries, including Switzerland the European Community, this grace period if of five years from the registration of the trademark. However, national differences exist in the legal provisions regarding the grace period.
Concerning the Community Trademark, the use of the trademark in only one country may be sufficient to satisfy the use requirements.
Renewal of Registration: A trademark registration runs for a period of ten years from the filing date. In order to extend the registration (from 10 years to 1 years) one has to file a request of extension with payment of corresponding taxes.
In some countries, for example the United States, it is necessary to furnish proof of use of the trademark (or eventually acceptable reasons justifying the lack of use of the trademark de la marque) in order to extend the registration.
In many countries, including Switzerland and the European Community, there is no examination of the registrability of a trademark in view of existing marks and this leads to the possible consequence of having two identical signs being registered for identical or similar products or services.
Most countries have legal provisions for an opposition procedure13, according to which the registration of a trademark is open to opposition from third parties during short period14 (for a Swiss or a Community Trademark, the opposition deadline is 3 months from the publication of the trademark). In general, the opponent needs to be the owner of earlier rights on a mark or another business sign.
If an opposition is formed, the opposition procedure can lead to:
– the confirmation of the registration;
– a limitation of the list of the products and services ; or
– partial or entire revocation of the registration.
Therefore, the opposition procedure is a relatively simple and cost-efficient way to revoke or to limit the scope of protection of marks later filed, with which there is a possible risk of confusion or conflict.
The above provisions are common to many countries. However, there are national differences in those legal provisions and in their enforcement. Among others, in some countries, opposition is not possible.
In many countries, the opposition deadline is from 1 to 3 months, from the publication of the mark, and this opposition period can occur (a) either following the end of the examination procedure by the competent authority – but before the registration of the mark (this is the case for a community trademark) – or (b) directly after the registration of the mark (this is the case in Switzerland). However, there are national differences in the procedures of opposition.
It is the role and responsibility of the owner to monitor and defend its trademark vis-à-vis unlawful use by third parties. It is advisable to put in place a watching system for the regular monitoring of the newly registered trademarks or filed and a survey of the business activities in the field.
Since the deadline of lodging an opposition is short (three months in Switzerland) it is necessary to be informed of the publications of the trademarks that would be potentially problematic. This is why a regular monitoring is essential.
If the infringement of a mark by another later filed trademark is only noticed after the expiry of the opposition deadline, it remains the possibility to take a legal action in front of an ordinary court. The major drawbacks of this procedure are the costs rather high and the length of the procedure.
There are national differences in the legal provisions and their enforcement.
– Scientific/technical and legal training (qualification exam)
– Internal (Industry)/External (Private practice)
– Interacts with a network of national attorneys all over the world and with lawyers
– Informs and advises on Intellectual Property rights
– Guides clients to an appropriate protection (patent, trademark, design, etc.) and advises on a protection strategy
– Analyses the patentability of the invention, the state of the art and rights of third parties (freedom to operate)
– Drafts and files patent applications, as well as applications for registration of trademarks and designs, etc.
– Represents and advises the applicant on steps to take to obtain, defend and/or attack an Intellectual Property right (interaction with the competent Offices, foreign agents, and lawyers in case of litigation)
– Is in charge of the administrative management of the portfolio of filed/granted rights
– Plays a part with assignments, licenses, due diligence, infringement, etc.