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Industrial Designs
Tamara NanayakkaraCounsellor
Small and Medium Sized Enterprises DivisionWorld 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
Cultural artistic and literary works
Creative designs
Distinctive signs
Microchips
Goods of a given quality due to its geographical origin
Confidential business information
Patents or utility models
Copyright and related designs
Industrial design rights
Trademark, Collective mark
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
Registration required
Protection up to 25 years
Protected against both deliberate copying and the independent development of a similar design
Unregistered design (EU)
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/