05Nov

Your Product Has Been Copied… Should You Protect It Through a Trademark or an Industrial Design?

Introduction

A company may spend years developing its product and invest significant resources in designing it, choosing its external appearance, and determining how it will be presented to customers. Over time, this appearance may become part of the company’s commercial identity and a key factor in distinguishing its product in the market.

But what happens when a competitor launches a product with a similar appearance? Is registering a trademark enough to prevent others from copying the product’s design? Or does the company need separate legal protection for its industrial design?

These are important questions that business owners, manufacturers, and commercial enterprises should consider. Confusing trademarks with industrial designs may leave important aspects of a product without adequate protection.

In Saudi Arabia, intellectual property regulations provide several mechanisms for protecting intangible and commercial assets, including trademarks and industrial designs. Although both types of protection may apply to the same product, each has a different scope of rights, protection, and procedures.

Therefore, protecting a product should not begin only after imitation is discovered. It should start during the design and development stages by identifying the elements that require protection, selecting the appropriate legal mechanism, and documenting and registering rights in accordance with applicable requirements.

First: What Is the Difference Between a Trademark and an Industrial Design?

To understand how to protect a product against imitation, it is essential to distinguish between trademarks and industrial designs, as each protects a different aspect of a product’s commercial value.

1. Trademark: Protecting Your Product’s Identity

A trademark helps consumers identify the source of a product or service and distinguish it from competing products and services.

A trademark may consist of a name, word, logo, drawing, symbol, shape, color, or combination of elements that perform a distinguishing function, provided that the applicable legal requirements are met.

Examples include:

The company or product name.
A logo displayed on product packaging.
A distinctive symbol or drawing associated with the product.
A shape or visual element that serves a distinguishing function.
A distinctive packaging method or appearance that may qualify for trademark registration, subject to the applicable requirements.

The importance of a trademark lies in protecting the identity through which the public recognizes a product. It also helps prevent the use of identical or confusingly similar marks that may mislead consumers or create confusion about the source of products or services.

For example, if a company sells cosmetics under a well-known brand name, and another company begins using a similar name or logo in a way that may lead customers to believe the products come from the same source, this may raise an issue of trademark infringement, depending on the circumstances and scope of protection.

2. Industrial Design: Protecting the Product’s External Appearance

An industrial design relates to the aesthetic or external appearance of a product, rather than necessarily to the name or logo it carries.

It may include the product’s shape, configuration, ornamentation, or visual elements that give it a distinctive appearance.

Examples include:

The external shape of a perfume bottle.
The design of a piece of furniture.
The distinctive appearance of an electronic device’s casing.
The design of product packaging.
Decorations, lines, or patterns appearing on an industrial product.
The external shape of a tool or consumer item.

If a company creates a distinctive design for a perfume bottle, industrial design protection may be an appropriate way to protect that appearance, provided the legal requirements for protection and registration are satisfied.

The objective is not to prevent competitors from producing perfumes in general, but rather to protect the specific design appearance that has obtained legal protection.

Second: A Practical Example Explaining the Difference Between the Two Types of Protection

Suppose a Saudi company launches a new skincare product, designing a bottle with an unconventional geometric shape and choosing a distinctive brand name and a unique logo.

After the product becomes successful, a competing company enters the market with packaging that closely resembles the original, but uses a different name and logo.

In this situation, several aspects should be examined:

First: Trademark Protection

If the competing company uses a name, logo, or distinctive element similar to the registered trademark in a way that may mislead the public, there may be grounds for taking legal action relating to trademark protection.

Second: Industrial Design Protection

If the similarity concerns the external appearance of the packaging itself, industrial design protection may be the appropriate route to examine, provided that the design meets the legal requirements and that the registration covers the elements involved in the dispute.

Third: The Possibility of Other Forms of Protection

Other rights may also be relevant, such as copyright protection for certain original drawings or artistic works, or rules concerning unfair competition, depending on the conduct involved and the available evidence.

This demonstrates why companies should not rely on a single type of protection without evaluating the other elements that make up the product and its commercial identity.

Third: Does Trademark Registration Protect the Entire Product Design?

A common mistake is assuming that registering a product’s name or logo grants exclusive rights over every detail associated with the product, including its packaging design and external appearance.

In reality, the scope of trademark protection depends on the registered mark, its nature, the elements it covers, and the protection granted to it.

If a company registers only a brand name, this does not automatically mean that it has obtained separate protection for every design, shape, or decorative element used in the product.

However, if the shape itself performs a distinguishing function and meets the requirements for trademark registration, it may be possible to seek protection for it as a shape mark, subject to the applicable legal requirements.

This is different from industrial design protection, as each type has its own legal nature and purpose.

Therefore, companies should not assume that trademark registration eliminates the need to consider industrial design registration, especially when the product’s external appearance is a key element of its commercial distinctiveness.

Fourth: When Does Your Company Need to Register an Industrial Design?

A company should consider industrial design registration when the product’s external appearance is an important part of its commercial value and the design qualifies for protection under the applicable legal requirements.

The following situations are among those that may require such consideration:

1. When the Product’s Shape Makes It Distinctive

If customers recognize a product through its external design, rather than only through its name or logo, protecting that design may be an important part of the company’s intellectual property strategy.

This is particularly relevant in industries such as furniture, household appliances, cosmetics, accessories, and consumer products.

2. When Developing Innovative Packaging

A company may invest in developing unconventional packaging to attract customers and strengthen the product’s presence on retail shelves.

In this situation, the possibility of protecting the design should be evaluated alongside registration of the trademark displayed on the packaging.

3. When Launching a Product Range with a Unified Design

Some companies rely on a distinctive design language across a range of products, such as a particular appearance for electronic devices, furniture, or everyday-use items.

In such cases, each design should be assessed separately to identify the elements that may qualify for protection. A company should not assume that registering one design automatically covers all products or different versions.

4. Before Displaying the Product at Exhibitions or Publishing Its Images

It is important to consider protection before announcing or publicly displaying a design, as novelty, disclosure, and filing-date requirements may affect its eligibility for protection.

For this reason, it is advisable to consult a specialist before publishing images, presenting the product at a trade exhibition, or making it available for sale, particularly if the design is new and no application has yet been filed.

Fifth: What Requirements Should Be Considered to Protect an Industrial Design in Saudi Arabia?

A product’s appearance does not automatically qualify for industrial design protection simply because its owner considers it attractive or different.

The applicable legal and technical requirements must be reviewed. Some of the key issues include:

1. Novelty of the Design

Novelty is one of the fundamental considerations when assessing whether an industrial design qualifies for protection.

If the design has become known or available to the public before the relevant date for the application, this may affect whether the novelty requirement is satisfied, subject to the provisions and exceptions established by the law and its implementing regulations.

Therefore, companies should avoid publishing or widely distributing a design before reviewing its legal status.

2. The Design Must Relate to the Product’s External Appearance

The subject of protection should be the product’s visual design, such as its shape, configuration, ornamentation, or visible elements that distinguish it.

A purely technical function, operating method, or internal mechanism should not be confused with an industrial design. Such elements may need to be considered under other legal protection systems, such as patent protection, if their requirements are met.

3. Identifying the Elements to Be Protected

It is important to clearly identify the appearance that the rights holder wishes to protect, as the images and drawings submitted with the registration application play a significant role in determining the scope of protection.

If the design consists of several elements, the applicant should clarify which elements are included in the requested protection and which are excluded, in accordance with the applicable technical requirements.

4. Verifying Ownership of the Rights

The individual or entity entitled to apply for protection must be identified.

The design may have been created by the business owner, an employee, an independent designer, or an external design agency.

A company should not assume that it automatically owns all rights simply because it paid for the design. The contractual relationship and agreements concerning ownership and transfer of rights must be reviewed.

Sixth: How Can Your Company Register an Industrial Design?

Protecting an industrial design begins with preparing a clear file that establishes the nature of the design, its ownership, and the elements for which protection is sought.

The process can be organized through the following steps:

Step One: Document the Original Design

Keep the initial drawings, digital files, photographs, and correspondence related to the design development process.

It is advisable to document the date the design was created, the modifications made to it, the individuals involved in its development, and any agreements relating to its ownership.

These documents can help establish the design’s history and origin if a dispute arises.

Step Two: Conduct a Preliminary Search

Before submitting an application, it is important to conduct a search to identify any earlier similar designs or registered rights that may affect the possibility of obtaining protection.

The search should not be limited to the local market if the product is connected to other markets or if the design has appeared at international exhibitions or on global platforms.

Step Three: Prepare Images and Drawings

Clear images or drawings should be prepared to show the design from the required angles, while complying with the technical requirements specified by the Saudi Authority for Intellectual Property.

This step is particularly important because the scope of protection is linked to the design as presented in the submitted documents.

Step Four: Identify the Applicant and Ownership Rights

The applicant must ensure that they are legally entitled to submit the protection application and that any rights belonging to designers or contractors have been clearly addressed.

Contracts should preferably include explicit provisions concerning design ownership, the right to file a registration application, the right to modify and commercially exploit the design, and the right to license it to third parties.

Step Five: Submit the Application and Follow Up on Its Procedures

The protection application is submitted through the approved channels of the Saudi Authority for Intellectual Property, together with the required information, documents, fees, and other requirements applicable at the time of filing.

The applicant must then follow up on the application, respond to any observations, and complete any additional requirements in accordance with the applicable procedures.

Step Six: Keep the Protection Certificate and Monitor the Rights

After obtaining the industrial design certificate, the company should keep it together with all documents relating to the design and monitor the deadlines and procedures required to maintain the right.

Any licensing or transfer of rights should also be documented in accordance with the applicable legal requirements.

Seventh: What Should You Do If a Competitor Copies Your Product Design?

Discovering a similar product in the market does not necessarily mean that legal infringement has occurred. Similarities may involve general or functional elements that are outside the scope of protection, or they may involve elements that are legally protected.

Therefore, the situation should be handled systematically before making accusations or taking action that may lack sufficient legal grounds.

1. Collect Evidence

Start by documenting the product in question. Keep clear photographs, information about the seller or manufacturer, links to sales pages and advertisements, and invoices or product samples whenever they can be obtained lawfully.

It is also advisable to record the dates when the product was identified and where it was displayed or sold, while preserving original copies of digital evidence whenever possible.

2. Review Intellectual Property Documents

Collect the industrial design certificate, if available, the trademark certificate, the drawings and images submitted with the application, and any contracts or documents proving ownership of the design.

The scope of any infringement cannot be accurately assessed without knowing exactly what has been protected.

3. Conduct a Technical and Legal Comparison

The registered design should be compared with the competing product, focusing on the elements included within the scope of protection rather than relying solely on the general impression that the two products look similar.

In some cases, it may be necessary to consult a technical expert to identify similarities and differences, particularly when dealing with complex designs or products containing multiple elements.

4. Identify the Appropriate Legal Basis

The situation may involve a registered industrial design, a trademark, copyright, or more than one intellectual property right at the same time.

The specific right that has allegedly been infringed, the competent authority, and the appropriate procedure must be identified instead of submitting a general complaint that does not clearly specify the protected subject matter or the nature of the alleged violation.

5. Take the Appropriate Legal Action

After reviewing the documents and evidence, the available legal options can be considered. These may include filing complaints or claims, or initiating judicial proceedings, depending on the nature of the case and the relevant jurisdiction.

In some cases, it may be appropriate to send a legal notice or demand to the other party. However, this depends on the strength of the evidence, the clarity of the rights, and the risks associated with the proposed action.

Eighth: Can a Product Be Protected by Both a Trademark and an Industrial Design?

Yes. A single product may qualify for more than one type of intellectual property protection, provided that each element meets the requirements applicable to its respective form of protection.

For example, a perfume bottle may include:

A registered brand name that distinguishes the product.
A company-specific logo.
A distinctive industrial design protecting the bottle’s shape.
Original drawings or artistic works that may qualify for copyright protection, depending on their nature and the applicable requirements.

This means that a company does not always need to choose between trademark protection and industrial design protection. Combining both may be an appropriate strategy for protecting different aspects of the same product.

However, it is important to remember that registering one right does not automatically grant protection over all other elements. Each type of right has its own procedures, requirements, and scope of protection.

Ninth: What Is the Duration of Industrial Design and Trademark Protection?

The duration of protection varies depending on the type of right and the legal system governing it.

In Saudi Arabia, the law provides a protection period of ten years for an industrial design certificate, calculated from the application filing date.

Trademarks, on the other hand, are subject to protection and renewal periods under the GCC Trademark Law and its implementing regulations. Trademark owners must monitor renewal deadlines and complete the required procedures to maintain their registrations.

The duration of protection should not be treated as a mere administrative detail. The expiration of a right or failure to complete the procedures required to maintain it may affect a company’s ability to prevent unauthorized use.

Tenth: Common Mistakes That Weaken Product Design Protection

A company may own a distinctive design but fail to take the necessary steps to protect it, or make mistakes that affect its ability to establish and enforce its rights.

Some of the most common mistakes include:

1. Publishing the Design Before Assessing Its Eligibility for Protection

Early disclosure of a design may affect the novelty requirement, depending on the circumstances of the disclosure and the relevant legal provisions.

It is therefore advisable to review the design’s legal status before publishing or publicly displaying it.

2. Relying Only on Product Name Registration

Trademark registration is an important step, but it does not necessarily protect the product’s external appearance.

Therefore, industrial design protection should be assessed separately whenever the product includes design elements that may qualify for protection.

3. Failing to Document the Agreement with the Designer

A company may hire an external designer to create packaging or a product, only to discover later that the contract does not clearly specify ownership of the design or the right to register and commercially exploit it.

For this reason, intellectual property provisions should be clearly established from the beginning of the contractual relationship.

4. Relying on Images Without Keeping Original Files

Images published on social media may help document the product’s public appearance, but they do not replace the need to keep original drawings, digital files, correspondence, and contracts that establish the stages of design development.

5. Assuming That Every Similarity Constitutes Infringement

Not every similarity between two products is evidence of a legal violation. Similar elements may be common within the industry, related to a technical function, or outside the scope of the registered protection.

Each case should therefore be assessed based on the relevant documents, registered rights, and the nature of the elements involved.

6. Neglecting Rights After Registration

Obtaining a protection certificate does not end the company’s responsibilities. It must continue monitoring its rights, renewals, and relevant procedures, identify unauthorized uses, and update its contracts and internal policies.

Eleventh: How Can Your Company Build an Integrated Product Protection Strategy?

Instead of waiting for a copied product to appear and then searching for a legal solution, a company can develop a preventive strategy that begins before the product enters the market.

This strategy may include the following measures:

First: Create an Intellectual Property Asset Register

Create a register that includes the company’s trademarks, industrial designs, drawings, software, and other assets that it owns or uses under license.

Second: Classify the Product’s Elements

Determine whether the required protection relates to the product name, logo, external shape, technical innovation, or artistic drawings.

This classification helps identify the appropriate type of protection for each element.

Third: Review Contracts

Ensure that agreements with employees, designers, suppliers, and design agencies contain clear provisions concerning confidentiality, ownership and transfer of rights, registration rights, and commercial exploitation.

Fourth: Establish a Disclosure Policy for New Designs

Identify the individuals authorized to publish designs or share them with suppliers, customers, and exhibition organizers. Use confidentiality agreements when necessary.

Fifth: Conduct Periodic Reviews

Review the company’s intellectual property portfolio regularly, verify that rights remain valid and that their information is up to date, and monitor the market and digital platforms for unauthorized use.

Sixth: Consult a Specialist Before Taking Action

When potential imitation is discovered, the relevant documents and circumstances should be assessed before sending demands or filing complaints, ensuring that any action is based on clear legal grounds.

Twelfth: The Role of Legal Counsel in Protecting Trademarks and Industrial Designs

The role of legal counsel goes beyond simply submitting a registration application. Effective protection begins with assessing the company’s assets, identifying the appropriate type of right for each element, and reviewing the contracts and documents that establish ownership.

Legal services in this area may include:

Assessing trademarks and proposed designs for protection.
Evaluating the possibility of registering an industrial design before publication or product launch.
Reviewing ownership documents and agreements with designers and employees.
Drafting and reviewing intellectual property assignment and licensing agreements.
Following up on registration procedures and responding to official observations.
Assessing cases involving product imitation or the use of similar trademarks.
Preparing legal claims and following up on intellectual property disputes.
Developing internal policies to protect designs and confidential commercial information.

The importance of obtaining early legal advice lies in helping companies choose the appropriate protection mechanism before investing time and money in a product that may become more difficult to protect against imitation after it enters the market.

Checklist for Business Owners Before Launching a New Product

Before launching any new product, a company can review the following points:

Has the product name and logo been identified?
Has the possibility of registering the trademark been assessed?
Does the product have a distinctive external appearance that may qualify for protection?
Has the novelty requirement been assessed before publishing the design?
Have the original drawings and files been documented?
Has ownership of the design between the company and the designer been clearly established?
Do the contracts contain clear provisions concerning the transfer and exploitation of rights?
Have the individuals authorized to share the design been identified?
Have registration certificates and related documents been retained?
Is there a system for monitoring cases of imitation and infringement?

If the company cannot clearly answer these questions, it may be appropriate to conduct a legal review of its intellectual property portfolio before launching the product or expanding its marketing activities.

Conclusion

The imitation of a product’s appearance is not merely a commercial problem or a matter of price competition. It may develop into an intellectual property dispute, particularly when the product’s external design represents part of the value the company has invested in developing and building.

The difference between a trademark and an industrial design is more than a difference in terminology. A trademark protects the elements that distinguish the source of products and services, while an industrial design focuses on the product’s external appearance, subject to the applicable legal requirements.

Therefore, effective product protection requires identifying its distinctive elements, selecting the appropriate type of protection for each element, documenting ownership, reviewing contracts, and completing registration procedures at the appropriate time.

Do not wait until a competitor launches a product that resembles yours before thinking about protection. Make intellectual property protection part of your product development, launch, and commercial growth strategy.

Suleiman Al-Omari Intellectual Property Law Office

Suleiman Al-Omari Intellectual Property Law Office provides specialized legal services covering the protection of trademarks, copyrights, patents, industrial designs, and trade secrets. Its services also include reviewing contracts and licensing and rights-transfer agreements, providing legal consultations, and following up on cases involving intellectual property infringement.

📞 Contact Suleiman Al-Omari Intellectual Property Law Office:

+966537778130

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This article is intended for general informational purposes concerning trademark and industrial design protection in the Kingdom of Saudi Arabia. It does not constitute a substitute for specialized legal advice. Applicable rules and procedures may vary depending on the nature of the right, the circumstances of the case, and the relevant laws and regulations.