Despite of the fact that most countries within the region share same language, culture and maybe history as well, yet when it comes to IP, major differences will be sought, and Design law is very much the same.
For example, the option of having a design registration in Qatar is not available, while in other countries design law is available for prosecution; but enforcement wise there are some challenges. Below is a summary of major differences:
Algeria
|
10 years - Renewable for 10 years |
Yes
|
Bahrain
|
10 years – Renewable for 5 years |
Yes
|
Egypt
|
15 years – Renewable for 5 years |
Yes
|
|
|
15 years – Renewable for 5 years |
Yes
|
Design Intersection with other IP Rights:
As explained above, design rights’ main or sole purpose is to protect the visual design of a tangible object, whether in 3D or 2D format, but cannot we rely on Copyright law to protect such designs, or even consider the Trademark law for other objects?! Or maybe unfair completion law!
Design as a Trademark:
So, for example would you rather protect your client’s bottle design as a 3D trademark or as an industrial design? Let us try and discuss the advantages of each alternative:
Under Trademark law:
Longer life, as the design will be renewed indefinitely.
No novelty requirements.
Easier enforcement, especially at Borders and Customs.
Under Design Law:
Shorter processing time for the registration.
Usually less costly.
Can include multiple designs within one application.
Whenever I am approached by a client seeking for a guidance on what to consider out of the two options, my answer will always remain as “it depends”. The answer to the following questions will help the client in choosing the most convenient option:
- Will this design be used for a long period over 15 years?
- Does this design present a product design out of many other products line?
- How many designs are we talking about?
- Do you consider this design a representation to your identity?
- Is this design sufficiently distinguished without any wording or logos?
If the design is to be used for a short term, and involves several versions, and still novel, then filing the same as an industrial design will be the wise option.
Otherwise, if the design is planned to represent a corporate identity, and sufficiently distinguished, and will remain in use for years to come, then trademark would be the option.
Design as a Copyright:
Some patterns can be filed as copyright applications, especially the 2D ornamental designs. In such cases, would you rather file them as Design applications or as copyright? Similar to the case of the trademark, the answer depends on several variables, such as; the importance of the design, the territories where the design is to be used, the novelty, budget and number of designs. The advantages of each approach are summarized below:
Under Copyright law:
Longer life.
No novelty requirements.
Official filing is not a necessity.
Much less costly.
Under Design Law:
Better enforcement in some circumstances (for similarities).
Focus on commercial side of the design rather than the art side.
Licensing opportunities.
Based on the above, if the design is unique, new, original, commercially important to the owner, and very much distinctive, then consider filing the same as an industrial design makes a lot of sense. Otherwise, and if the pattern is not of high importance (part of a design), or subject change, and the budget is limited, then copyright might be the option for such uses.
The Hybrid Era:
Why cannot we have both rights for the same design? Why cannot we start with one IP right and then move to the other available option before the expiry of the first one?
This is becoming very common now, especially when filing a design as a 3D TM, where such application is usually rejected, unless proved to be distinctive over time, and using the design for a considerable period will definitely support such entitlement. So, the reasonable approach is to start with the design application as Industrial design and then (just before the expiration of the design) to convert the same into a 3D TM.
Same scenario can be also considered for filing 2D design, where we can apply it as an Industrial Design as well as a CR. In fact, we applied for Industrial designs in the countries where the product is commercially used, while in other countries, where product is scheduled to be shipped in few years’ time, it was filed as a CR.
This explain the fact that despite of the intersection between ID and other IP rights, the numbers for new filings are steadily increasing (almost %5 a year) in major regions, namely US & EU, as many owners are in fact considering the hybrid option for their products.
Finally, I would like to emphasize that there are no set or static best practice for such cases, as there are too many variables that are needed to be examined and considered when choosing the suitable IP right to protect your design.