Lesson 3: How do Industrial Designs Intersect with Other Types of IP?

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HOW DO INDUSTRIAL DESIGNS AND TRADEMARKS INTERSECT?

Because trademark protection covers distinctive shape elements of a product (trade dress), trademark protection can intersect with industrial design protection.

In other words, in most countries, you can use both trademark law and industrial design protection over the same product so long as the legal requirements for each form of IP are met.

Trademark Design
  • The test for trademark infringement in the product design will be based on whether or not consumers are confused by your competitor’s product design. It is sometimes difficult to establish this.
  • Trademark rights can exist indefinitely
  • Industrial design infringement doesn’t require evidence of confusion – only that the competitor has reproduced the same or a substantially similar design.
  • Industrial design protection lasts only for a relatively short period

Depending on your circumstances and the relevant legal principles applicable in the key countries in which you want to do business, you can consider using trademark law and industrial design law concurrently as well as cumulatively once your industrial design protection ends.

Last modified: Monday, 18 September 2017, 3:19 PM