IP Law: Clearing the Fog
April 05, 07A police officer sees an expensive car being driven suspiciously along the highway. He pulls the driver over to see if everything is okay. Before the police officer has a chance to say anything, the driver says to him, slightly slurring his words, “It’s true officer, I confess. I don’t have a valid driver’s license.” From the passenger seat his friend blurts out, “Don’t listen to him! He always says crazy things when he’s drunk!”
How often do we find ourselves in unfamiliar circumstances, unsure about what to do? The truth is that many diamantaires are aware of intellectual property rights as a concept, but lack sufficient knowledge about the subject. For example, you may hear people talking about “patenting a name” or “copyrighting a design.” These statements are based on a lack of knowledge. This lack of familiarity with IP is understandable; after all, in the previous generation of diamantaires, who even thought about intellectual property rights?
Nonetheless, times have changed, and it is now crucial that diamantaires have at least a basic understanding of the concepts and tools of IP, how to use them, how to know when others are using them, and what that could mean for business.
The two most common types of intellectual property used in the field of diamonds and jewelry are registered designs (a.k.a. design patents in the
In order to explain the differences, consider the following: When a child is born, there are certain endearing features that a parent or grandparent may notice immediately. A dimple, deep blue eyes, brown curls, chubby legs. Apart from these physical features, which by themselves are enough to make the child special, after a lot of thought, that child will also be given a name by its parents. This is now a special child with a special name. Although both the appearance and the name belong to the same child, it is clear that they are not the same.
Now think of the new diamond cut that you are planning to launch. Before anything else, potential buyers will normally notice the cut of the stone, its specially crafted facets, its luster, and the way it makes the light dance. You will agree that this has everything to do with the design of the stone, and nothing to do with its name. The design of the stone may be protected by registered design rights in one or more desired countries, so as to prevent unauthorized third parties from copying the stone in these countries.
It is therefore clear that a registered design relates solely to the external or aesthetic appearance of the protected object.
You will, of course, bequeath your new diamond cut with a name that is evocative of romance, passion, or other emotions, and that will kindle the imagination of your customer. This name, which undoubtedly will have been the subject of much careful thought and planning, can be the subject of a registered trademark, which can be used to prevent an unauthorized third party from copying the name in countries where it is registered.
It should now be clear that a registered trademark relates solely to the name, and not the appearance of an object marketed under that name.
It is fundamental that even though you may introduce a new design with a new name into the market, separate registration of the design and the name enables you to prevent others from copying the design, regardless of the name that they may use for their product; as well as prevents others from copying your trademark in a similar area of trade, but in connection with a different product design.
We will discuss each type of protection in greater detail in the coming weeks.
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This is the fourth in a series of articles about intellectual property. Click Related Articles below for the first three articles.
Jeremy Ben-David, originally from the UK, has been involved in IP since 1985, and since 1995 has been managing partner of JMB & Co, a full service Intellectual Property firm. He can be reached by email at: jmbendavid at israel-patents.co.il.