In Nicaragua: Industrial Design or Three-dimensional Trademark?
When a holder has between hands an innovative product that is not only constituted by the name that identifies it, but by the product itself, what is the best way to protect it?, through an industrial design or three-dimensional trademark?
In many occasions this election isn’t clear and in the practice we find registrations in both modalities, whose protection or over-protection is debatable.
In order to decide which type of protection is the best one, it is necessary to know which is which:
Industrial design is all kinds of formal innovation related to the characteristics of appearance of the product or its ornamentation, that is to say, every object that may serve for the fabrication of a product and that may be described for its structure, configuration, ornamentation or representation, it is the total or partial appearance of a product that has a special or particular characteristic, either for its color, shape, material or by the product itself.
The industrial designs may be two-dimensional o three-dimensional, being able to include various views in distinctive formats or images that make clear the definition and the reach of the Industrial Design. Surely, it has to be clear that in order to consider an Industrial Design, it must be novel, original and hasn’t been disclosed.
What is special of an Industrial Design is that the product is the one that takes the shape of the geometric body, which is to say that almost every industrial or artisan articles may be object of design protection.
However, the three-dimensional trademark is every susceptible sign of graphic representation that serves to distinguish in the market, products or services through three-dimensional shapes such as wrappers, containers and the product shape itself, when they’re able to be differentiated from others in commerce, for example, the distinctive container of a perfume, the particular design of a purse, a soap or a pair of shoes, and these go associated with some distinctive sign either the color, colors combination, logotype, denominations or others that differentiate it.
Therefore, the industrial designs protect the novel and the singular character of the objects and the three-dimensional trademarks protect the distinctive character of the sign, which at the same time is identified from others. The novel is an important factor when deciding which protection figure will be used, because if the industrial design has been commercialized or exposed for years before the request, it may be easily canceled for lack of novelty.
Also, it has to be taken into consideration the protection time. For example, in Nicaragua an industrial design has a duration of five years extendable for two equal periods for a maximum total of 15 years, nevertheless, the trademark protection is of 10 years extendable for undefined equal periods, therefore in terms of time trademarks have greater protection.
Nevertheless, not in every case the trademark registry is the recommendable course, since having to be associated with a nomination limits in a certain way the capacity of addressing unfair actions of form reproduction, since it has to demonstrate to the authorities that this form is also protected as a three-dimensional trademark and not all jurisdictions have records before these infractions.
Having clear both concepts, it can be appreciated the thin line between each other, which without a doubt may cause confusion when deciding which figure is the appropriate to protect the Intellectual Property rights. Therefore, it has to be analyzed in a personalized way each case to determine which modality fits best to what you want to protect and that also, is in accordance with the current legislation of each country.
Mayra Navarrete Crovetto
Senior Associate
García & Bodán
Nicaragua