How Do Patents Intersect with Industrial Designs and Trademarks?
HOW DO PATENTS AND INDUSTRIAL DESIGNS INTERSECT?
Learn more about how patents intersect with these other forms of IP.
HOW DO PATENTS AND INDUSTRIAL DESIGNS INTERSECT?
Patent and industrial design protection can be combined and used to protect different aspects of the same invention.
Remember Andrew? He is claiming patent rights in his invention of a pen, but he also has industrial design protection over the non-functional aesthetic elements of the pen.
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Andrew will be able to use his patent registrations to stop anyone who manufactures the same invention (i.e., a pen made from a series of magnets) in the countries in which he holds his patents, even if the pens don’t look like the POLAR Pen.
At the same time, relying on his industrial design registrations, he can stop anyone from manufacturing pens that have the same design features as the POLAR Pen, even if that person doesn’t also reproduce the patented invention. Of course, Andrew will be able to enforce both his patent rights and his industrial design rights against anyone who produces both the pen itself and its design features.
1 Andrew Gardner, “POLAR Pen & Stylus 2.0 — Made from Magnets”, online: Kickstarter <www.kickstarter.com/projects/1171695627/polar-pen-both-tool-and-toy-pen-stylus-made-from-m/description>.
HOW DO PATENTS AND TRADEMARKS INTERSECT?
As we have seen, you can claim trademark rights in trade dress, including in the distinctive shape of an object. As such, trademark law could protect the shape of a patented invention, so long as the trade dress elements are not primarily functional in nature (i.e., the design or shape is not essential for the product to function, but, instead, is a non-essential enhancement that gives that particular shape a unique brand identity in the marketplace).
If the shape is primarily functional in nature, then allowing trademark protection over that shape would prevent competitors from manufacturing the same product. This is the role of a patent and once the patent expires, everyone is free to manufacture the previously patented product.
Many countries therefore make patents and trademarks mutually exclusive to the extent that you won’t be able to use trade dress protection over the functional features of your invention once your patent expires.
For example, we have already discussed the LEGO case in a previous module, but remember that once LEGO’s patents expired worldwide, the company sought to claim that the shape of the toy bricks had become distinctive under trademark law. In most jurisdictions, they were unable to demonstrate that the shape of the bricks was not primarily functional in nature. As a result, they were not able to assert trademark rights in the shape of the bricks.
Then you could assert trademark rights over the trade dress during the life of your patent and after the patent has expired. However, you still need to ensure that the shape of your product is distinctive, so you will need to actively promote the shape as a brand indicator among consumers. If you succeed in establishing trademark rights over the shape of your product, you still won’t be able to stop a competitor from manufacturing your invention, but you will be able to restrict entry into the market of the same or a confusing trade dress.
In other words, your competitor will have to make sure that its product, which embodies your invention, looks sufficiently different from yours to avoid consumer confusion.