A quick view of Industrial Designs in the Andean Community (CAN)

Industrial designs are an intellectual property (IP) right that protects the aesthetic appearance of a product that may be manufactured on large scale (industrial application). It may consist of three-dimensional features, such as the shape of an article, or two-dimensional features, such as patterns, lines or color.

In practice, all fields of business may apply for the protection of their products by means of an industrial design. These IP rights include goods that have a very different nature, such as: a chessboard, the chess pieces of a chess game, the rose shape of an apple pie, a motor vehicle, a speedbump, silverware, a bottle, a broom, or even the front-page of a website (user interface design). Actually, industrial designs may even fall over a portion or specific part of a complete product (the leg of a chair, the sole of a shoe, or the screen of a cellphone, for example). In such cases, applicants are encouraged to specify the part of the whole product that is excluded from the scope of protection in the design application through dotted lines or shaded areas, for example.

According to a concept drafted by the “Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications” of World Intellectual Property Organization (WIPO), whose opinion is quoted and shared by the Andean Court of Justice – in charge of interpreting the applicable law for IP matters in the member countries which include Colombia, Ecuador, Peru and Bolivia –, a design must: be visible and easily perceived by the human eye; have an appealing appearance which attracts consumers into buying it; not be dictated by functional or technical aspects; be utilitarian, i.e. it must have an industrial application, that is, having the ability of being manufactured on a large scale.      

Regarding the CAN specifically, two main conditions must be met by applicants in order for their designs to be registered, namely: (i) absolute novelty; and (ii) an aesthetical or ornamental purpose. Once a design is registered in the CAN, its holder is granted protection for a period of 10 non-renewable years, counted as from the date of the filing of the application or of the priority date, should it be claimed.

With respect to the first condition that must be met by a design in the member states of the CAN, the Andean Court of Justice has explained that the absolute novelty principle has three aspects: (i) no disclosure of the proposed design in any part of the world whatsoever, regardless of the domain in which a prior design may be found. Indeed, the specialty principle, which enables the coexistence of similar or identical marks provided that they cover goods or services deemed to be dissimilar, does not apply to designs; (ii) substantial differences of the applied design from prior art, i.e. such differences from previous existing designs must not be secondary; (iii) something that is novel must be new depending on the specific context and historical moment in which it appears, that is, it is not known to the people who belong to the economic field in which the design will be applied.

Turning to the second requirement of the ornamental purpose of industrial designs in the CAN, the court has stated that the design must be arbitrary and merely decorative, which means that it must not be dictated by the nature of the product nor must it be functional. The court actually considers that a design that does not have a simply ornamental purpose is because it is more likely to be a utility model, which belongs to the patents and technical inventions domain. In my view, this argument of the court may be quite helpful in many cases, but of no aid and rather difficult to apply when it comes to analyzing the shape of a chessboard, its pieces or to the form of a dessert.

The Andean Court of Justice has also pointed out that designs must be distinctive. By distinctiveness, the court means to say that applied designs must be sufficiently different from existing designs or prior distinctive signs, more precisely, 3D marks. For the sake of clarity, it must be noted that the court refers to innate and exterior distinctiveness when talking about trademarks. The former is a concept related to the capability that a sign has of being perceived as indicating the commercial source of the goods or services covered by it. The latter expression refers to the ability of being able to differentiate a product over another in the market. With respect to designs, the court stresses that proposed designs should not include existing forms (innate distinctiveness) and must be sufficiently different from prior distinctive signs (exterior distinctiveness). I must confess that I find this position of the court more puzzling than useful.  

Anyhow, when assessing the differences between designs, the Andean Court of Justice has established an important rule that differs considerably from, for example, the European (EU) practice handled by European Union Intellectual Property Office (EUIPO) and European instances.

Indeed – and trying to summarize a great deal –, the EU legal practice requires for designs to be novel (undisclosed by any means before the time of the filing or before the priority date – if any – is claimed), and to have an individual character. This latter condition implies that the applied design is sufficiently different from previously existing designs from an overall impression.

In order to determine this, the EU practice has created the four-step review. First of all, the examiners must determine the sector of products in which designs are incorporated. Afterwards, the examiners must place themselves in the eyes of the informed user, someone who stands somewhere between the average consumer (used in the trademark world and who holds no particular knowledge) and the and the man of the art (used in the patent domain and who holds technical skills), according to the purpose of the designs at stake. In third place, the examiners shall determine the degree of freedom that the designer holds taking into account the nature of the products, bearing in mind that the shape is, to a greater or lesser extent, imposed by a technical function of the product. Lastly, the examiners will assess the result of the comparison of the designs taking into account their overall expression, as explained in our preceding paragraph.  

Coming back to the CAN, and notwithstanding that the Andean Court of Justice stresses the importance of determining the field in which the design is rendered, in order to identify if the design is novel or not, current case-law establishes that when assessing lack of novelty or not of a design in relation to prior designs, the examiners must place themselves in the eyes of the average consumer, not that of the informed user, but the average consumer.

If the examiners find elements in the proposed design that will convince the average consumer of purchasing the product from other previous goods in the market, the applied design will hold substantial differences from prior art and may proceed to registration, whereas if its features are not relevant for buying the product over existing products in the market, the differences will be merely secondary and the application shall be rejected.