The registration of an industrial design in Colombia protects the particular, ornamental or aesthetic appearance of a product. The application is filed with the Colombian Superintendency of Industry and Commerce (SIC) and, once granted, confers exclusive rights in the design for ten years from the filing date.
Protection may extend to two-dimensional or three-dimensional shapes, lines, contours, configurations, textures, materials or combinations of colors, provided that the design is new and is not dictated exclusively by the product’s technical function.
What is an industrial design?
Under Article 113 of Decision 486 of the Andean Community, an industrial design is the particular appearance of a product resulting from any arrangement of lines or combination of colors, or from any two-dimensional or three-dimensional external shape, line, contour, configuration, texture or material, without changing the intended purpose or function of the product.
Industrial design protection focuses on the visible appearance of the product. Accordingly, it does not protect the product’s operation, technical features, internal mechanism or manufacturing process.
What may be protected as an industrial design?
Industrial design registration may protect, among other elements:
- The three-dimensional shape of a product
- The external configuration of packaging or containers
- The appearance of furniture, tools, household appliances or devices
- Designs applied to textiles, packaging, surfaces or flat materials
- Combinations of lines, colors, textures, contours or materials
- The ornamental presentation of parts, accessories or components
Registrability must be assessed on a case-by-case basis, taking into account the specific appearance of the product, the relevant prior designs and the exclusions established under the applicable legislation.
Novelty requirement for industrial designs
To qualify for registration, an industrial design must be new. A design is not considered new if, before the filing date of the application or the validly claimed priority date, it has been made available to the public anywhere through its description, use, commercialization, publication or by any other means.
Merely secondary differences from earlier designs are insufficient to establish novelty. A design is likewise not considered new solely because it is applied to products belonging to a different class.
For this reason, it is advisable to assess the availability and prior art relating to the design before disclosing it, offering it commercially, publishing it online, presenting it at trade fairs or commencing its distribution.
Designs that cannot be registered
Decision 486 excludes from registration, among others, the following designs:
- Designs whose commercial exploitation must be prevented in order to protect morality or public order
- Designs whose appearance is dictated entirely by technical considerations or by the performance of a technical function
- Designs consisting solely of a shape whose exact reproduction is necessary to mechanically assemble or connect the product with another product
Where the innovation lies primarily in the product’s operation, technical structure or solution to a technical problem, it may be necessary to consider protection through a patent for invention or utility model, depending on the characteristics of the development.
Who may apply for registration?
The right to apply for registration initially belongs to the designer. This right may be transferred by assignment or transmitted by succession. The applicant and registered owner may be either an individual or a legal entity.
Where the applicant is not the designer, the transfer of rights must be evidenced, where applicable, by the corresponding assignment document.
Requirements for registering an industrial design
The application must be filed with the Colombian Superintendency of Industry and Commerce and should include, among other elements:
- Application form containing information about the applicant, the designer and the product to which the design will be applied
- Graphic or photographic representations that clearly identify the appearance for which protection is sought
- Identification of the product and the corresponding class and subclass under the Locarno Classification
- Power of attorney where the application is filed through legal counsel
- Assignment document where the applicant is not the designer and evidence of the transfer is required
- Proof of payment of the applicable official filing fee
The quality of the representations is particularly important because they visually define the subject matter for which protection is sought. The images must be clear, consistent with one another and adequately show the necessary views of the product.
Registration procedure before the SIC
The registration procedure generally comprises the following stages:
- Filing of the application and allocation of a filing date
- Formal examination to verify compliance with the documentary requirements
- Publication of the application so that third parties may review it and file oppositions
- Examination of registrability by the Colombian Superintendency of Industry and Commerce
- Final decision issued by means of a resolution granting or refusing registration
Term of industrial design registration
An industrial design registration remains in force for ten years from the filing date of the application. Under the applicable legal regime, this term is not renewable.
Once the protection expires, the design is no longer covered by the exclusive rights arising from the registration.
Rights conferred by registration
Registration confers upon its owner the right to prevent third parties from exploiting the design without authorization. In particular, the owner may take action against any person who, without the owner’s consent:
- Manufactures products incorporating or reproducing the protected design
- Imports products incorporating the design
- Offers or places such products on the market
- Commercially uses products reproducing the design
- Produces or commercializes identical designs or designs presenting only secondary differences
Registration facilitates the legal enforcement of the design, strengthens product differentiation in the marketplace and enables the owner to structure licensing, assignment, manufacturing or distribution agreements involving the protected asset.
Legal advice on industrial design registration
Cárdenas Vega Asesores has lawyers specializing in industrial property who advise clients on the assessment, preparation, filing and prosecution of industrial design applications before the Colombian Superintendency of Industry and Commerce.
A professional preliminary assessment helps identify potential risks, determine the appropriate protection strategy and prepare representations that accurately define the design for which registration is sought.