The theory and practice of patent law overlap with the view that the doctrinal and factual three-dimensional mark and design actually achieve the same legal result - the defense of the image of an object. However, the differences in the legal effects of the registration of the two objects of intellectual property are significant and should be explored in depth, with the idea to properly structure a strategic decision, on the most adequate means of defense for dealing with in a particular case. From this point of view, I find this topic particularly interesting because it is the basis for solving legal issues of a theoretical and practical nature that concern the correct registration of a product's vision, depending on several important criteria:
- how much it has been used and has become commercially recognizable prior to the date of its filing as an industrial property;
- how many images should the protection cover;
- target time as the speed of the registration;
- what is the duration of registration required by the applicant;
- should the pre-selected remedy be in line with any possible future legal disputes that would have been sorted out when there is an improperly chosen intellectual property subject to the application or registration.
1.What is the three-dimensional trademark? According to the legal definition of Article 9 (1) of the Marks and Geographical Indications Act (on Bulgarian language the abbreviation is “ZMGO”), the mark is a sign that is capable of distinguishing the goods or services of one person from those of others and can be represented graphically. Such characters may be words, including names, letters, figures, drawings, figures, the shape of the good or its packaging, a combination of colors, sound signs, or any combination of such characters.
The restrictive interpretation of this norm leads us to conclude that a three-dimensional mark is a sign represented graphically, which is a drawing, a shape, a shape of the product or its packaging, which can be represented graphically and in a specific combination of colors. According to Article 10 of the ZMGO, the right to such a mark falls within the category of the absolute rights of the first applicant acquired through registration with the Patent Office from the filing date of the application. The term of registration of a three-dimensional mark shall be 10 years, which may be extended for the same period indefinitely, upon payment of the respective maintenance state fee within the time limit under Article 39(3) of the ZMGO, concerning its renewal.
2.What is an Industrial Design? In the meaning of Article 3 (1) of the Bulgarian Industrial Design Act(its Bulgarian abbreviation is “ZPrD”) ,”design” is the visible appearance of a product or part of it, determined by the features of the shape, the lines, the drawing, the ornaments, the color combination or a combination of these. According to the legal definition of paragraph 2 of the same rule, an object is any product obtained in an industrial or craft manner, including parts intended to be assembled in a composite object, a set or a combination of products, packaging, graphic symbols and printed fonts, with the exception of computer programs.
According to Art. 10 of the Law on Industrial Design Act, the design right is in the category of the absolute subjective rights of the applicant acquired through the registration at the Patent Office as of the filing date of the application. The design registration period is 10 years from the date of filing, which can be renewed for three consecutive periods of 5 years by paying the respective maintenance fee under Art. 39(1) of the ZPrD, i.e. the total duration of a national Bulgarian industrial design cannot exceed 25 years.
3.What are the differences and the similarities between the three-dimensional trademark and the industrial design? Both commented objects of industrial property graphically represent the shape, shape, packaging, and color combination of an image. From this point of view, as noted in the beginning, they are identical as a legal result. The initial protection period for both objects is also 10 years, but unlike industrial designs that have limited time protection (they can be renewed for a maximum of three periods of 5 years after the initial 10-year registration period, their total validity may be no more than 25 years), the marks can be practically eternal, as they can be renewed every 10 years for a new period of 10 years of registration.
When it comes to terms, from a practical point of view it is important to see how quickly the relevant object of protection can be registered because the rights in trademarks and designs arise from the date of filing, but the real judicial, respectively civil, administrative or criminal law protection can only take place after the date of registration. Here I should point out that both national design and Community design (which covers the 28 EU Member States) are being registered for not more than a month. The difference with trademarks in regards of registration deadline is fraudulent, because by law (ZMGO or Regulation 207/2009) a trademark should be registered for 6 months - three months of formal expertise up to publication date and three months of opposition period (here I refer to national and OHIM procedures).
In this context, I should point out that purely technically the Bulgarian Patent Office never complies with deadlines and stretches the formal expertise up to 8 months before the publication date, followed by a three-month opposition period. The reasons for the extension of the formal expertise in the Bulgarian Patent Office may be due to limited administrative capacity in terms of the staff, and therefore the registration period of one brand on the national line goes unjustifiably long - more than 12 months (even when there is no opposition). Unlike the Bulgarian Office, OHIM strictly complies with all terms of registration of the Community trademark such as the procedure, and at what stage in the process is currently the brand, it can literally be traced back to days, but even there the registration process continues for 6 months (if there is no opposition). If an opposition is filed against the mark applied for, the procedure will be extended for years, depending on the outcome of the dispute and the stages of appeal to be filed - the Opposition Division, the Appellate Body of the respective Office, the judicial phase (in Bulgaria passing through the Administrative Court in Sofia, in Europe - through the Court of Justice of the European Union).
The simple conclusion that this implies is that if the urgent procedural protection of an intellectual property object requires fast registration in order to immediately put into effect the rights of the proprietor, it is obviously more convenient to declare, respectively, to register a design, not a three-dimensional trademark. Naturally, we should also note here the other advantage of industrial designs in stead of brands - the so-called "multiple application" for a design can contain up to 7 images of the same product, i.e. graphically the design allows for a rather broad revelation of the visual an idea of what the product is, by presenting a frontal view, one from the top, from the side, cut, three-dimensional image, etc., which, even in a three-dimensional mark, cannot happen as a figurative distinction, since the image you submit for registration is only one.
3.1. The problem of "defective novelty" in industrial designs. I find it necessary to discuss a practical point in the described context regarding the suitability of a design for a three-dimensional mark, especially if the first one was distributed on the market prior to the date of its application. This concerns the "novelty" criterion for industrial designs, the misappropriation of which would lead to a deletion of the registered design by an entity with a legitimate interest. Very often, in practice, it appears that the chosen method of procedural protection against registered design, subject to rights in administrative penal proceedings under Art. 65 of the Industrial Design Act (Bulgarian abbreviation - ZPrD) or in civil claim for violations of design under Art. 57 of the Civil Procedure Act is the initiation of a procedure for deletion against this particular registered design in the hypothesis of Art. 29(2), item 3 of the Law on the Protection of Competition.
This hypothesis establishes the rule that registration is deleted at the request of any person when the design is identical in the meaning of Art. 12(2) to the Industrial Design Act, made public in any way before the date of filing of the application or the priority date, anywhere in the world, or identical to a design that was filed prior to the filing date of the application, respectively the priority date, and registered under national or international order or as a Community design (Decision No. 978 of 19.01.2012 under the Administrative Adjudication No. 14375/2010 of the Supreme Administrative Court). The focus is on the so-called "defective novelty". The Industrial Design Act states in Article 12 that the design is new if, prior to the date of filing the application or prior to the date of priority, no other identical design has been known which has become publicly available through publication, use, registration or disclosure and be another way anywhere in the world.
Designs are considered to be identical if their features differ only in non-essential elements. From a practical point of view, certain legal entities themselves vindicate the novelty of their design because they have made the mistake of using it and commercially distributing it years before claiming it as an object of protection. When the moment when these rights are upheld in court, the entities to whom those rights are opposed attack the design precisely on the basis of its vicious novelty. I am commenting on all this in detail because, in the hypothesis of the commented defected novelty of a design, it is obviously the more appropriate way of protection to choose the three-dimensional mark of the same image, the registration of which is aimed at, as against the trademarks, the novelty criterion Is inapplicable, at least not in view of their common availability and commercial use. That is, if the image has become public in any way one year prior to the filing or prior to the date of priority of a trademark, it will not be the reason for its deletion post-factum.
To be absolutely correct, I should point out that a design may also be deleted by opposing an earlier industrial property with an identical image created by another law - in this case an earlier three-dimensional trade mark (object of protection under the ZMGO) in the hypothesis of Art. 29(2), item 2 of the ZPrD. The same is true with the opposite of the legal option for the deletion of a later registered three-dimensional trade through the opposition to it of an earlier registered industrial design with identical image, object of industrial property under the ZPrD - art. 26, para 3, Item 3, letter "d" of the Marks and Geographical Indications Act(ZMGO).
3.2. The problem of "lack of distinctive character" in three-dimensional marks. According to Art. 11(1), item 2 of the ZMGO, the trademark would be not registered if it does not have a distinctive character. The consistent national case-law and that of the Office for Harmonization on the Internal Market (OHIM) adopts the view that the criteria for assessing the distinctive character of three-dimensional marks consisting of the appearance of the goods themselves do not differ from those applicable to the other categories of trade marks Freixenet / OHIM). However, in the application of those criteria, which are common to the marks, account must be taken of the fact that the consumer does not always perceive in the same way visually a three-dimensional mark consisting of the appearance of the goods themselves as compared with a word or figurative mark a sign which does not depend on what the goods covered by it appear to be.
The reasons for most of the decisions made on the subject point to the fact that in practice consumers do not have a habit of suggesting the origin of the goods based on their shape or the shape of their packaging in the absence of any word or graphic element. It may be inferred that it is more difficult to ascertain the distinctive character of a three-dimensional mark than that of a word or figurative mark.
Therefore, the courts accept that a three-dimensional mark consisting of the packing of a product is distinctive only if it permits the consumer of the product who is reasonably well-informed and reasonably observant and circumspect to distinguish a product from the goods of competing undertakings, (Case C-218/01 Henkel and Case T-399/02 Eurocermex vs OHIM on a form of beer bottle, Henkel, judgment of 12 February 2004 in Case C-218/01 Henkel  ). All this leads to the factual and hence legal conclusion that only a three-dimensional trade mark, which differs significantly in its form or vision from the standard, already publicly known and therefore customary, other images in an economic sector, may performs its essential function of indicating origin, i.e. not devoid of distinctive character in the case of Article 11 (1) (2) of the ZMGO corresponding to Article 7 (1) (b) of Regulation No 207 / 2009 (Freixenet / OHIM).
An example of the case law is the recent (on 24 February 2016) decision of OHIM in Case T-411/14 concerning a dispute on the refusal to register the uncut loop of Coca Cola as a three-dimensional Community trade mark. The decision concerns the refusal to register on absolute grounds for lack of distinctive character of the mark. The Court of Justice of the European Union accepts that, in order to allow registration of a trade mark under Article 7 (3) of Regulation No 207/2009, the distinctive character acquired through the use of the same mark must be proved in the part of the Union, where it does not have the same character concerning Article 7 (1) (b) to (d) of that regulation. Moreover, the acquisition of distinctive character as a result of the use must have occurred prior to filing the application for registration. In the case of non-word marks, such as the three-dimensional ones, it must be presumed that the assessment of their distinctive character is the same throughout the Union, except where there are specific signs to the contrary.
Consequently, the trade mark must have acquired a distinctive character through its use throughout the Union in order for it to be registered under Article 7 (3) of that regulation ( Glaverbel vs OHIM, judgment of 12 September 2007 relating to the structure of a glass surface, T-141/06). OHIM also takes the view that the acquisition of distinctive character through the use of a three-dimensional mark requires at least a substantial part of the relevant public to recognize, by virtue of the trademark, the goods or services covered as originating from a certain plant. Therefore, the circumstances in which the condition relating to the acquisition of distinctive character through use cannot be regarded as satisfied solely on the basis of general and abstract data, such as certain percentage values. To prove the distinctive character acquired through use cannot be achieved solely by the presentation of sales volumes and advertising material. Furthermore, the mere fact that the sign has been used on the territory of the Union for some time is also not sufficient to show that the users for whom the goods concerned are intended perceive the sign as an indication of commercial origin (see (Glaverbel vs OHIM).
I have used this example with the three-dimensional mark of the bottle of Coca Cola in order to justify the fact that even the brand of the packaging of a seemingly familiar product can sometimes be difficult to identify as distinctive, and this could raise a problem with regard to the choice of object of protection - especially regarding the judgment of a trademark or design.
That is why, in conclusion, I would like to point out that, while the three-dimensional mark and design could appear at first sight to be 'the same thing', the approach to the choice of one of the two objects at the request must be precisely assessed on the basis of the assessment of multiple arguments “for” and “against” that have been misled by the presumption of a possible future development of each individual case without attempts to unify as this would obviously lead to serious negative legal consequences post-factum ( I am speaking about the case "Coca Cola").
Author: Mr.Atanas Kostov – trademark and design attorney