What is the difference between the design patent for packaging bags and the trademark?

Industrial designs, registered trademarks, and works of art are all objects of intellectual property and all have identifying characteristics, but their prescribed legal norms differ, and the examination and authorization departments differ, so there is a high possibility of legal overlap and legal conflict issues.

This actually involves the relationship between patent rights, trademark rights, and copyright. Therefore, distinguishing their differences has important practical significance. Let's learn more about it with Shunxingyuan Packaging, a professional manufacturer of flexible packaging.

I. Differences between Industrial Design and Registered Trademark

Both industrial designs and registered trademarks fall under the scope of intellectual property, both give visual effects, and both share some common principles for infringement judgment, such as the classification of similar products or goods, overall observation, and key part observation. However, there are also obvious differences between the two:

First, different objects of protection.

The object of protection for design patents is the decorative or artistic external appearance design of a product. This design can be a flat pattern, a three-dimensional shape, or more commonly, a combination of both.

A trademark, on the other hand, is a specific identifying mark or pattern for distinguishing products, which does not involve the shape and structure of the product itself, and is primarily text-based.

Second, different examination procedures.

Design patents only require formal examination, meaning the Patent Office primarily examines the request form and the required drawings, photographs, samples, or models.

In accordance with the provisions of China's Patent Law, if no grounds for rejection are found after preliminary examination of a design patent application, the Patent Office shall make a decision to grant the design patent right, issue the corresponding patent certificate, and register and announce it.

Design patents become effective from the application date. However, China's Trademark Law stipulates that trademark examination is divided into formal examination and substantive examination. Substantive examination is conducted on the basis of formal examination to determine whether the text, graphics, their meaning, objective effects, etc., of the applied trademark meet the registration conditions.

This leads to a conclusion of whether to approve or reject the application, which is the most crucial step in the trademark registration process. After substantive examination is passed, there is also a 3-month opposition period, during which no one raises an opposition.

Or, even if an opposition is raised but is not established, the registration will be approved, and the trademark right becomes effective from the date of approval. It is clear that the trademark examination procedure is stricter than that for design patents.

Third, different protection periods.

The validity period of a design patent is 10 years from the application date and cannot be renewed.

The validity period of an exclusive trademark right is 10 years from the approval date, but it can generally be renewed indefinitely, meaning the registrant can apply for renewal, with each renewal period being 10 years.

Fourth, different standards for infringement determination.

The criterion for determining design patent infringement is whether the overall visual effect between the accused product and the design patent is similar; if similar, it constitutes infringement.

The criterion for trademark infringement determination is whether the accused mark, when compared to the trademark, is likely to cause consumer confusion; if it causes consumer confusion, it constitutes infringement.

Fifth, different purposes of protection.

Trademarks primarily distinguish different sources of identical or similar goods or services through their distinctiveness and identifiability, in order to achieve effective competition in commercial competition and maximize business interests. Therefore, trademark designs tend to be distinctive and unique.

Although industrial designs have a certain distinctiveness from other designs, they are mainly combined with the product and manifested in the product's practicality. Industrial designs not only require distinctiveness but also need to be compatible with the product's practicality.

Sixth, different degrees of legal strictness.

A trademark owner must file a trademark registration application with the national trademark administration and obtain approval for registration from them to enjoy exclusive rights. Industrial designs do not require substantive examination, but an application must be filed with the national patent administration, and only if no grounds for rejection are found after preliminary examination will the Patent Office grant a design patent. Relatively speaking, obtaining trademark rights is procedurally more complex and stringent than obtaining design patent rights.

II. What kind of products are suitable for design patent application?

Article 2 of China's Patent Law stipulates: "Design" refers to a new design of the shape, pattern, or their combination, or the combination of color with shape and pattern, that is aesthetically pleasing and suitable for industrial application.

Therefore, unlike inventions and utility models which are also protected by patent law, design patents do not protect technical solutions. Their object of protection should meet the following requirements:

It should be the shape, pattern, or their combination, or the combination of color with shape and pattern, of a product;

It should be a design applied to the external appearance of a product;

It should be aesthetically pleasing;

It should be suitable for industrial application;

III. Under what circumstances can a trademark not be applied for?

1. Only consisting of the generic name, graphic, or model number of the goods

The generic names, graphics, and model numbers of goods are commonly recognized and used by a certain industry, and some are shared characteristics that distinguish this good from other goods. No one should monopolize them, and using generic names and graphics as trademarks may also harm the interests of other practitioners in the same industry, contrary to the principle of fair competition. Although these marks themselves do not have the function of distinguishing different operators, if the generic names, graphics, or model numbers of these goods are used as trademarks by a certain operator on their own goods, and through use, consumers are sufficiently able to distinguish the goods marked with them from other identical goods, then it should be considered that they have acquired distinctiveness and can be registered as trademarks.

For example, "PDA" was originally a generic name for personal digital assistants. When a manufacturer of personal digital assistants uses it as a trademark for its own products, and through use, it becomes distinguishable from similar products such as "Business Tong," "Ming Ren," and "Kuai Yi Tong," it can be considered to have acquired distinctiveness and can be registered under current law. Of course, the fact that "PDA" was registered at a time when the law explicitly prohibited the registration of generic names as trademarks was not due to its acquisition of distinctiveness through use, but entirely due to an "accident" caused by the examination department of the trademark authority not understanding that "PDA" was a generic name for personal digital assistants. It must be pointed out that even if such trademarks are registered, the trademark owner has no right to prohibit others from using the generic name on similar goods, as it is essentially "public property."

2. Simply indicating the quality, main raw materials, function, use, weight, quantity, and other characteristics of the goods

The reason for prohibiting the direct use of words and graphics indicating the characteristics of goods as trademarks is the same as the reason for prohibiting the use of generic names and graphics of the goods as trademarks. It should be pointed out that the law only prohibits the use of marks that "directly" indicate the quality, main raw materials, function, use, weight, quantity, and other characteristics of the goods, while marks that "indirectly" indicate or imply certain characteristics of the goods are not prohibited, because marks that indirectly indicate or imply certain characteristics of the goods are often trademarks with distinctive characteristics. Even marks that directly indicate the characteristics of goods can acquire distinctive characteristics through use. For example, the "Mengniu" trademark used for milk and other dairy products, although it directly indicates the raw materials and origin of the goods, has acquired very distinctive characteristics and recognizability through long-term and widespread use. Before the revision of the Trademark Law in 2001, similar trademarks would have encountered great difficulties in obtaining registration. However, according to the provisions of Article 11 of the revised Trademark Law, they can be more easily approved for registration.

3. Lack of distinctive characteristics

A trademark should have distinctive characteristics. This is a positive condition for applying for trademark registration. If a mark lacks distinctive characteristics and is not identifiable, it cannot be registered. However, if, after trial use, a connection is established between the trademark and the goods, and distinctive characteristics are acquired, making it identifiable, it can be registered.

Long press the QR code to follow, Customize your exclusive packaging

www.dgsunpak.cn  Packaging bags