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Protection of parts of an object by Industrial Design: A controversial issue of the Brazilian Law

The Industrial Property Law 9,279/96, in its article 95, considers industrial design as any ornamental plastic form of an object or any ornamental arrangement of lines and colors that may be applied to a product, providing a new and original visual result in its external configuration and may serve as a type of industrial manufacture.

Since, by definition of the Law, there is not an explicit legal impediment for protecting parts of an object as industrial design, such benefit can be acquired in specific cases. At first, the Brazilian Law allows protection of detachable parts and/or components parts of an object, provided that the legal requirements are met, i.e., novelty, originality and industrial application.

In such situations, the registration becomes possible because the form presented is completely defined and finished. On the other hand, the same does not occur with parts of objects that are not separable from the main body of the object, since they are applied in the industrial assembly line only during the manufacturing process of products without interruptions and cannot be marketed separately.

According to the understanding of the Brazilian Patent and Trademark Office (BPTO), to be considered a detachable part and therefore protectable as industrial design, such part shall be manufactured and marketed separately, not being a constituent of the industrial process of the main product, and still being applied out of the assembly line of the main object.

Likewise, a component part will also be protectable as industrial design if, in addition to the fact of being manufactured and marketed separately, it also has features distinctly observed during its assembly and to be visible during normal use of the main product.

The jurisprudence demonstrates that this issue is indeed controversial, with the need of a case by case analysis. In complex cases, the BPTO will apply a practical analysis to decide whether the grant of an industrial design registration is justified in accordance with the legal parameters.

Therefore, some criteria allow us to evaluate the possibility of protection of this type of object. Thus, the protection of parties, detachable and/or components of a given object is allowed in Brazil, provided that such parties have their own features, are identified independently from the main object and can be individually manufactured and marketed.