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

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/