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Industrial design x three-dimensional trademarks

by Markus Michael de M. Wolff

September 01, 2004

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The current Brazilian Industrial Property Law that came into force in May of 1997 establishes two types of protection for the external esthetic form of an object.

The first and more traditionally known type is protection through registration of the industrial design. All ornamental artistic forms of an object or the ornamental set of lines and colors that can be applied to a product can be protected, of course, if they present originality and novelty in the external configuration. Regarding the requirement of novelty, the object or the ornamental set applied to the object cannot previously have been revealed to the public in any part of the world. However, Brazilian law foresees a grace period of 180 days for publication by the author himself or publications that have occurred as a result of his acts. The application for industrial design registration undergoes an examination during which the novelty / originality of the design is not evaluated, which currently reduces the time of its being granted to two to six months after an application is filed.

Another interesting characteristic of the industrial design registration process is the possibility of requesting an examination based upon merit, submitted only by the applicant himself, at any time after protection has been granted. This possibility is of great value in the cases where, due to a copy or substantial imitation of the protected product, a legal action against the violator is imminent. Currently, the Brazilian Patent Office carries out the examination of merit within a period of three to four months. This short amount of time for granting has led to a true explosion in the number of industrial design registrations; from 1997 until the end of 2002 approximately 20,000 requests for registration were granted, compared to only 4,000 patents for industrial models or design in the corresponding period 1991-1996. It is important to remember that the protection offered through the industrial design registration is limited to a maximum period of 25 years.

If protection for a longer period of time is desired, or when the requirement of absolute novelty of the product no longer applies, there is the option of protection of the external esthetic form of an object as a three-dimensional trademark. The main requirement for this type of protection is a condition of visual distinction — that is, the object cannot represent the necessary, common or popular form of the product.

Since this Law took effect there have been approximately 1,400 three-dimensional trademark applications submitted, but up until the moment only 102 registrations have been granted. Currently, the average time for obtaining the registration of a three-dimensional trademark is four years. Products, such as chocolate bars, ice cream, footwear, drink bottles and also electric showers can be found as three-dimensional trademarks. The advantages of the three-dimensional trademark are the unlimited virtual time of its protection, since it can be renewed every 10 years, and the absence of the absolute novelty criterion in the industrial design registration. However, it is necessary that the form of the product that is desired to be protected can operate as a trademark; that is, that it makes it possible to distinguish the product from similar ones of the same origin or from many other origins. 

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Markus Michael de M. Wolff

Engenheiro Mecânico, Advogado, Agente da Propriedade Industrial

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