Protection of Products Design and Packaging in the Form of Branches of Intellectual Property Rights

Document Type : Scientific research

Authors

• Zahra Shakeri
• Saeed Habiba
• Soheila Nurali

University of Tehran

https://doi.org/10.22067/le.v23i9.56911

Abstract

Introduction
One of the most important factors that encourages consumers to purchase goods or use services, and make them choose one of them among various goods and services, is the design of products and services or their packaging. Due to this importance, intellectual property rights protect the design of goods and services or their packaging. However, this protection is not limited to one branch of intellectual property rights and it is possible that various aspects of intellectual property rights protect the design and packaging under some conditions. In this regard, the question that arises here is what are the differences between the protection in various forms of intellectual property rights and that which protection is more appropriate? And finally, is multiple protection possible?
Theoretical Framework
The present article attempts to examine the aforementioned issue in two parts. In the first part, protection of design or packaging through various aspects of intellectual property rights will be studied and compared with each other. Then, in the second part, the protection of designs and packaging through multiple legal frameworks is evaluated and scrutinized.

Methodology
This study attempts to find an answer to questions above by using an analytical-descriptive approach. To this aim, this study seeks to draw a comparison between the various branches of intellectual property rights by using desk research through making use of articles, books, and conducted studies. In some cases, this study benefits from practical examples and judicial decisions in different countries. In addition, in order to investigate more about Iranian legal system, a field research was conducted and then discussed with relevant experts.
Results and Discussion
The results show that various branches of intellectual property rights for protection of design of goods and services or their packaging differ from each other in many ways, including conditions, term, and registration requisiteness. The following table can show the comparison between the different branches in summary.

Drawbacks Benefits Term Type
- Must be distinctive.
- Must be nonfunctional.
- Must be registered (in most legal systems).
- No need to originality.
- No need to novelty.
- The longest period of protection. As long as use is continued (subject to extension) Trade mark
Trade dress))

- Must be novel.
- Must be original (in some legal systems).
- Must be nonfunctional.
- Must be registered.
- The shortest period of protection.
- No need to distinction.
- Protection through this branch can help to acquire distinction and cause trade dress protection in future.
10 – 25 years

Industrial designs
- Must be original.
- Possibility of creating similar works by others. - No need to distinction.
- No need to novelty.
- No need to registration (in most legal systems).
Life of author + 50 years after his death Copyright
- Not grant of exclusive rights to the owner.
- Proof of civil liability's elements in a lawsuit. - No need to the conditions of intellectual property rights (distinction, novelty, originality)
- No need to registration.
- Protection of consumers and public along with the right holder.
Unlimited Unfair competition

Conclusion
The results of this study show that a decisive response about the most appropriate branch of intellectual property rights in relation to protection of design of goods and services or their packaging cannot be given, because each aspects of intellectual property rights has several advantages and disadvantages and ultimately, the designer can determine which branch is more suitable to protect his design or packaging. On the other hand, it should be noted that different legal systems accept multiple protection of a design or packaging, as each legal framework is independent of other formats regarding purpose, function, and conditions.

Keywords

• Product (Service) design and packaging
• Trade dress
• Industrial design
• Artistic and literary rights
• Unfair competition law

References

[1] Amiri, H. (2009). Enforcement of Industrial Property Right in WTO Regulations and Iranian Law, Tehran: Mizan Lagal Foundation. (In Persian)

[2] Ayati, H. (1996). Intellectual Creations Rights with Emphasis on Literary and Artistic Creations Rights, Tehran: Hoghooghdan Publisher. (In Persian)

[3] Babaie, Z. (2010). Protection of Trademarks Against Unfair Competition, Master Thesis, Intellectual Property Rights, University of Tehran. (In Persian)

[4] Bagheri, M., & Babaie, Z. (2013). Protection of Trademarks Against Unfair Competition, Journal of Private Law, 8(19), 85-102. (In Persian)

[5] Bernardeau-Paupe, O. (2015). Protection of Trade Dress and Packaging in France, German French Polish AIPPI Seminar, March 2015, Paris, 1-33, available at: .

[6] Brijesh, C. (2014). Trade Dress: Registrability and Enforceability, BRICS IP Forum, Remfry & Sagar, 1-44, available at: < http://www.bricsip.org/2014/munich /bipf _ prese ntatio ns/ 31-10.20_am-ZA+REST_BRICS_TRADE_DRESS.pdf>.

[7] Carminatti, A.(2001). Protection, Registration and Enforcement against Infringement of Three-Dimensional Marks, Product Configuration and Industrial Design, 1-17, Available:.

[8] Caslowitz, C. (1993). Trade Dress and Section 43(A) of the Lanham Act. Protection for "Total Image" of the Visual Displays of Software Applications, The Journal of Law and Technology, 33(1), 187-199.

[9] Comprehensive Bill for Protection of Literary and Artistic Property Rights and Related Rights, (2011). (In Persian)

[10] Crouch, D. (2013). A Trademark Justification for Design Patent Rights, University of Missouri School of Law Legal, Studies Research Paper No. 2010-17, 1-52.

[11] Design for Protection of Industrial Property, (2016). (In Persian)

[12] Jewell, R. (2002). Experiencing the Humanities- Visual Arts: Feast for the Eyes, Available at: < http://www.tc.umn.edu/~jewel001/humanities/book/10visualart. htm>.

[13] Ghabooli Dorafshan, M.,& Mohseni, S. (2011). Legal Study on the Legal Protection of the Industrial Design (The Comparative Study of the Background and Concept), Journal of Knowledge & Development, 17(32), 27-66. (In Persian)

[14] Habiba, S.,& Hanifi, N. (2012). Comparative Study of Definition and Registration Criteria of Industrial Designs According to 1386/2007 Act, Comparative law researches, 16(1), 25-47. (In Persian)

[15] Mohammadi, P. (2012). Originality: A Requirement for the creation of work, Journal of Private Law, 6(15), 31-54. (In Persian)

[16] Patents, Industrial Designs and Trademarks Registration Act (2008). (In Persian)

[17] Protection of Authors, Composers and Artists Rights Act (Copyright Law) (1970). (In Persian)

[18] Perez, M. (1996). Reconciling the Patent Act and the Lanham Act: Should Product Configurations Be Entitled to Trade Dress Protection after the Expiration of a Utility or Design Patent, Intellectual Property Law Journal, 4(3), 1-27.

[19] Piva de Andrade, G.,& Borges Carneiro, R. (2010). Trade Dress Protection in Brazil, World Trademark Review, 98-99, Available at:.

[20] Prandin, D.,& Caneva, D. (2008). Design and Trade Dress in Italy, World Trade mark Review, 14, 1-3.

[21] Presented by Bardehle Pagenberg .(2015). Design Protection in Europe, 1-20, Available: .

[22] Presented by International Association for the Protection of Intellectual Property (AIPPI), (2000). Three-dimensional Marks: The Borderline between Trademarks and Industrial Designs, Available at: .

[23] Qiu, B. (2009). Ferrero Wins Unfair Competition Case in China, Journal of Intellectual Property Law & Practice, 4(3), 158-159.

[24] Reese, J. (1994). Defining the Elements of Trade Dress Infringement Under Section 43(A) of the Lanham Act, Texas Intellectual Property Law Journal, 103(2), 1-30.

[25] Sandberg, S. (2009). Trade Dress: What Does It Mean?, Franchise Law Journal, 29(1), 10-17.

[26] Schickl, L. (2013)."Protection of Industrial Design in the US and in the EU - Different Concepts or Different Labels?, The Journal of World Intellectual Property, 16(1-2), 15-38.

[27] Shakeri, Z.(2014). The Formality– Free Protection; A Principle in the Copyright with Emphasis on Berne Convention, The Legal System of Iran & U.S.A, Journal of Comparative Law Review, 5(1), 111-132. (In Persian)

[28] Shams, A. (2003). Property Law on Industrial and Commercial Marks, Tehran: Samt Publisher. (In Persian)

[29] Simaee Sarraf, H.,&, Hamdollahi, A. (2015). Unfair Competition and Comparison with the Concept of Trade-Related Institutions, Journal of Private Law, 3(11), 37-69. (In Persian)

[30] Sunde, M.,& Lee, P. (2013). Design Patent: Law Without Design, Stanford Technology Law Review, 17, 277-303.

[31] The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), (1994).

[32] The Berne Convention for the Protection of Literary and Artistic Works, (1886).

[33] The Paris Convention for the Protection of Industrial Property, (1883).

[34] Vesali Mahmood, R. (2005). Comparative Study of the Rights of Trademark Registration, The Judiciary Law Journal, 50-51, 113-136. (In Persian)

[35] Wiebe, J., & Pundsack, S. (2010). The Strategic Use of Design Protection for Trade Dress, World Trademark Review, 100- 101, Available: < http://www.world trademark review.com/ Magazine/ Issue/26/Country-correspondents/Canada-Bereskin-Parr-LLP>.

[36] WIPO, (2006). Looking Good - An Introduction to Industrial Designs for Small and Medium-sized Enterprises, Publication No. 498(E).

[37] WIPO, (1999). Protection Against Unfair Competition: Analysis of the Present World Situation, 1-88, Available: .

[38] WIPO, (2005). Understanding Industrial Property, Publication No. 895(E).

[39] Yashmi, N. (2012). What is Industrial Design and Who is Industrial designer?, Journal of Growth Education Art, 31, 26-33. (In Persian)