Industrial Designs

Tamara Nanayakkara Counsellor Small and Medium Sized Enterprises Division World Intellectual Property Organization

Design Protection   The law protects the ornamental or aesthetic aspects of the product (not the product itself) Includes lines, colours, shapes, contours, texture etc

Product    Defined broadly to include industrial or handicraft products Packaging, typefaces, logos Includes designs of parts intended to be assembled into a complex product and which remain visible after assembly and during normal use

Context  Heightened Competition  More and more enterprises producing goods performing the same function    Consumers increasingly powerful and demanding What makes the goods of one enterprise different to those of others Why should I buy your product?

What is an Industrial Design?

three-dimensional designs  shape of products

Do you want a watch or a Swatch?

  The Swatch Group is among the ten largest users of the system for international deposit of industrial designs (103 applications in 2001) Distinctive „look“

Two Dimensional Design  Ornamentation, patterns, lines or color on a product

“It’s the design, .........”    One way of differentiating similar products is through design Make product attractive and different from the competition.

Does not need monumental changes, simple changes could keep a product exciting

Rationale for Protection

Rationale for Protection

 Provides incentive for creativity in design  Return on investment  Encourages fair competition and honest trade practices

Intellectual Property Rights  Innovative products or processes  Patents or utility models  Cultural artistic and literary works  Copyright and related designs  Industrial design rights  Creative designs  Distinctive signs  Trademark, Collective mark  Microchips   Goods of a given quality due to its geographical origin Confidential business information   Layout-designs or topographies of integrated circuits.

Geographical indications  Trade secrets

Designs   Registered design right Unregistered design right

Requirements    Novel Original Individual character

Novelty  it should not have been disclosed to the public anywhere before the filing date (or the date of first public disclosure in the case of unregistered rights)

Grace period  A grace period of one year for disclosure to the public before application for registration

Individual character  It must be apparent to an informed user (not an expert) that the design is different from products which existed previously.

Excluded from protection    Designs dictated solely by technical function  or else other manufacturers would be excluded from producing that product Designs with official symbols or emblems Designs contrary to public order or morality

Spare parts  Some effort to remove protection from visible replacement parts of cars (bonnets,

bumpers, doors, lamps, rear protection panels, windscreens)

Obtaining protection   formal examination of application leaving the design to be opposed or cancelled by interested parties Registration valid upto 25 years

Obtaining protection abroad

 IP Rights territorial. Rights obtained in a country are only valid in that country. For obtaining rights in other countries the options are:  The regional route – Single application at one of the regional offices; ARIPO, Benelux Design Office; OHIM, OAPI  The international route - Hague agreement - Administered by WIPO (46 countries)

Scope of Rights   The right to prevent unauthorized copying or imitation by third parties Exclude all others making, offering, importing, exporting or selling product with the design

Registered vs unregistered designs

Registered design Unregistered design (EU)

 Registration required   Protection up to 25 years  Protected against both deliberate copying and the independent development of a similar design   Right available upon making the design available to the public Protection up to 3 years Infringement only if the design was copied

Beyond Exclusivity

 An intangible asset  Strengthen brand    increasing commercial value of a company and its products Strategic partnerships joint ventures May be licensed (or sold)

Enforcing Industrial Designs      Responsibility on owner of the ID to monitor, identify imitators and decide on action Advice of IP lawyer “ Cease and desist” letter to infringer Search and seize order cooperation with customs authorities to prevent importation of infringing goods.

Other Legal Instruments for protecting Designs   Trademarks  Three dimensional mark Copyright  Two dimensional designs considered works of art

Designs vs TM  As design rights can protect much of what could be protected by TM (stylized words, logos, typefaces and packaging) making “double” protection possible

Advantages of Design right vs TM      Design can be enforced against use of the design on any product whereas TM is confined to the class of goods No requirement of use Could be used to protect marks that are not distinctive No need to prove confusion or reputation Usually simpler and cheaper application process

Disadvantages of Design right vs TM    TM protection could be perpetual whereas design rights are limited in time TM have no novelty requirement Pure word marks, sounds and smells can only be protected by TM

Designs vs copyright    Registered designs are infringed whether or not there was deliberate copying Registered design right needs registration (unless unregistered rights are recognized) Design protection is only for a short duration

INTELLECTUAL PROPERTY FOR BUSINESS SERIES

Website  Please consult the SMEs Division website at  http://www.wipo.int/sme/en/