Trademark, patent, copyright or trade secret? Overlapping IP Rights
A UAE based company comes up with a new bottle design for their shampoo product. Is the bottle design protected by the laws governing: (a) trademark; (b) patent; (c) copyright; (d) trade secret, or is it (e) all of the above?
The correct answer is (e); the bottle design is capable of being protected at least in theory under all four areas of law.
Trademark, patent, copyright, and trade secrets fall under the umbrella of Intellectual Property (IP) law. All IP laws have the protection of human innovations as their common denominator. However, the various sub-categories of IP law may be distinguished from each other as follows:
• Trademark law protects any mark, including words, pictures or signs, used to distinguish a person’s goods and services from those of their competitors. In lay terms, it refers to branding. For example, the “Starbucks” brand name and mermaid logo are trademarks of the Starbucks coffee company.
• Patent law protects inventions, particularly those which are useful in an industrial or commercial context. Famous patented inventions include the light bulb and the automobile. Within the patent law category, there are utility models and industrial designs. Utility models are those inventions which cannot meet the inventiveness threshold of a patent and instead provide minor improvements on existing inventions. Industrial designs are inventions of an aesthetic or ornamental kind.
• Copyright law, generally, protects any original work in the areas of literature, the arts or science, whatever its description, form of conveyance and expression, significance or purpose. However, certain types of original work do not qualify for copyright protection for example: (a) ideas and discoveries – these are normally covered by patent law instead; and, (b) names and slogans – which are afforded protection under trademark law rather than copyright.
• Trade secret laws protect any confidential information which belongs to a company and gives it a competitive edge. For example, the trade secrets of a perfumer would be the unique formula for the perfumes. Although some of the ingredients of the perfume might have to be disclosed due to health and safety or other regulations, the overall formula would be a closely guarded trade secret.
For the most part, the above sub-categories of IP maintain distinct areas of coverage, but there are many situations in which the lines will be blurred.
Copyright and trademark
If we take the example of packaging design and labels on a consumer product, we note that it consists of artistic and verbal expressions and may therefore be subject to copyright. The packaging and labels will also no doubt include the manufacturer’s logos and the brand name of the product and in this way may be protected by trademark law.
Trade secret and patent
Often an inventor will seek to patent his invention. However, it usually takes many months if not years for an invention to be ready for patenting. If someone else brings the invention into the public domain before a patent application is filed, the original inventor’s subsequent patent application will be rejected for lack of novelty. There will be no legal recourse against the other party, unless the original inventor can prove the latter had access to his invention and copied it. Therefore, in the time before a patent application is filed, the inventor will need its secrecy.
Patent, copyright, trademark and trade secret
If we go back to our original question regarding the new bottle shape, we find that there four potential avenues available to the manufacturer.
Firstly, while the bottle shape is under development and prior to its launch to the public, it would need to be kept a trade secret.
Secondly, it may also arguably be subject to protection under copyright as a work of applied art. Much would depend on the design in question. In some jurisdictions, such as the US, works of applied art are distinguished from industrial designs. While the former are copyrightable, the latter are not. The difference between the two is whether the design aspect can be separated from the functional aspect of a “useful article”. If the answer is yes, it will be afforded protection by copyright. No such “separability test” has yet been developed in the UAE law, however, it is safe to assume that similar principles would ultimately be relied on in that copyright applications for applied art will be subject to more scrutiny than applications for fine art. Registration is not necessary for copyright but can ease the burden of proof in the event of dispute over who owns the copyright.
It would also be possible, although difficult, to register a bottle design as a trademark. The bottle design would have to be inherently distinctive or have acquired distinctiveness over time. Very few bottle shape designs or indeed any other functional product designs can be said to be inherently distinctive to the consumer as a source identifier. The average consumer does not usually regard the shape or other functional aspects of a product as indicative of its origin. Therefore, invariably, functional designs would be registered as trademarks only on the basis of acquired distinctiveness.
This is proved by submitting evidence that over the course of time, the functional design has achieved a distinctive association with the manufacturer in the mind of the consumer through intensive marketing. The most famous example of such acquired distinctiveness is the Coca Cola contour bottle shape which is now a registered trademark (or “shape mark”) in many jurisdictions. The great advantage of a trademark registration over other types of IP rights is that it can be renewed indefinitely, giving the trademark owner permanent exclusivity over the mark in question.
The bottle shape could also be registered as an industrial design. Once granted, industrial designs, like others in the patent family, are not permanent; they expire after a certain period of time, whereupon the inventor or designer loses the exclusive right to commercially exploit the design. Unlike copyright or trademark rights, however, the functionality of the design is less of an issue. However, if the design is dictated by functional requirements, it will be more appropriate to register it as a utility model rather than an industrial design. For the purposes of this article, we will assume that our shampoo manufacturer has designed a bottle shape which is not dictated by functionality and is therefore capable of being registered as an industrial design.
The plan of action
The shampoo manufacturer in our case study would be advised to take the following steps:
• During the design development phase, the manufacturer should take reasonable measures to ensure that the bottle design is kept confidential in order to preserve its status as a trade secret.
• As soon as the design has been finalised, the manufacturer should apply to register it as an industrial design. This is because functional designs are accorded protection under this area of IP law more easily than under copyright and trademark law.
• Once the product has been marketed to the public for a significant period of time, and acquired distinctiveness, the manufacturer should file an application for registration of the bottle design as a trademark. It is important to obtain trademark protection since an industrial design has a limited lifespan, while a trademark registration can be maintained in perpetuity (subject to payment of renewal fees and continued use).
It is not recommended for the manufacturer to go for a copyright registration, since it is unlikely to be granted or sustained.
About:
Manijeh Khan is a lawyer in the IP IT Department of Al-Tamimi & Company and is based in the firm’s Dubai Internet City office. Prior to joining Al-Tamimi, Manijeh worked for more than four years at the Dubai branch of Shalakany Law Office, one of the oldest and most reputable law firms in the Middle East. During her tenure at Shalakany Law Office, Manijeh gained the opportunity to work closely with several established companies, including the FMCG giant, Unilever, for whom she acted as legal counsel for more than three years.
Al Tamimi & Company Advocates and Legal Consultants, originally established in 1989, is today one of the leading law firms in the Arabian Gulf region. It is the largest local, non-affiliated law firm in the United Arab Emirates with offices in the Emirates of Dubai, Abu Dhabi and Sharjah, Riyadh (KSA) and associate offices in Doha, Baghdad and Riyadh. Visit www.tamimi.com for more information.
