Industrial Designs. What is Protected:“ The Appearance of a Product” the Aesthetic Feature of a Product; not the Technical aspect (Patents) nor its name.

Industrial Designs

• What is Protected:“ The Appearance of a Product”

the Aesthetic Feature of a Product; not the Technical aspect (Patents) nor its name (Trademarks)

Artistic vs. Industrial Designs

• Artistic designs are those which only have a decorative purpose, without any industrial aim. These designs have no end other than to be admired (paintings, sculptures, etc.)

• Industrial designs are those which are intended to be used for practical purposes (furniture, household implements, etc.). This type of creation brings together the useful (the industrial aspect) and the pleasing (the aesthetic aspect)

Two-dimensional Designs

Three Dimensional Design

No limitation as regards the types of products which may be protected through industrial designs laws

The Guggenheim Museum in Bilbao

Botswana Agate Long Rosary

Most requested classesin 2007

11% in Class 6: « Furnishing »

9

10% in Class 9: « Packages and Containers »

10

9% in Class 10: « Measuring Instruments »

11

7% in Class 7: « Household Goods »

12

6% in Class 23: « Fluid Distribution or Heating

Equipment »

13

5% in Class 12: « Means of Transport »

14

5% in Classes 2 and 5: « Garments » and « Textiles »

15

5% in Class 11: « Decorative items »

D M /0 5 9 8 3 0 - 9

reto u r / b ack

16

4% in Class 23: « Electronic Goods »

17

Industrial Design important branding tool

Just as trademarks distinguish your product or service, industrial designs differentiate your products from those of the competition. Both are intellectual property tools that contribute to your branding strategy and therefore need protection.

Economical Importance of Designs

When buying a product, consumers decisions are mainly influenced by:

• price• technical qualities (patents)• name or reputation (trademark)• external appearance (designs)

Designs: became nowadays the most decisive factor

The Age that we live in...• Old stone, middle stone, new stone age

• Bronze age

• Iron Age

• Consumer Age !! Designs!!!

Number of Designers hired by Renault (French Car

manufacturer)

0

20

40

60

80

100

120

140

1950 1960 1970 1980 1990 2000 2006

Formal Condition: the Need to Obtain Registration

• Application form

• single or multiple application?

• monoclass or multiclass application?

• reproduction(s) of the designs

• name of the creator

• payment of fees

Examples of National Fees (for 1 Design)

• Australia: 150$; Norway: 200$;

• Canada: 350$; Singapore: 150$;

• France: 90$; Spain: 110$;

• India: 45 $; Switzerland: 200$;• Japan: 480$; UK: 180$;

• Maroc: 40$; OAPI: 155$

• USA: 320$; European Community: 450$

Substantive Conditions for Protection

• The design must be NEW / ORIGINAL / Individual character

• The designs must not be dictated by technical function

• the design must not be contrary to public order or morality

Novelty

• A design is considered to be novel if its overall impression differs sufficiently from previous designs disclosed to the public (“prior art”)

• The concept of “prior art” includes all designs which have been disclosed to the public before the filing date of the registered design, irrespective of the place and time of the disclosure

Novelty

• The assessment of novelty always implies a comparison between the design for which protection is sought and the prior art

Grace Period

If the design has been disclosed to the public by the holder himself before the filing date, most countries provide for a “grace period” (usually 12 months as from the date of disclosure) to validly apply for registration without novelty being destroyed

Assessment of Novelty

Novelt

y

Assessment of Novelty

Not N

ovel

Assessment of Novelty

Not N

ovel

Assessment of Novelty

Novelt

y

Assessment of Novelty: new design or design lacking novelty?

Not N

ovel

Assessment of Novelty: new design or design lacking novelty?

Not N

ovel

Assessment of Public Order and/or Public Morality

• A representation of Jesus Christ on his cross for labels of wine?

• Cigarettes box containing the representation of a young girl and young boy (teenagers) smoking while leaving school?

Examination of the Application by IP Offices

• formal examination only by IP Offices, or

• formal and substantive examination?

Type of examination by Offices

• Most IP Offices carry out only an examination as to the form (Europe, South America, Africa),

• Some other IP Offices carry out a formal AND a novelty examination (Asian countries, USA, UK)

• New trend: novelty examination carried out only upon request from the applicant (Norway, Portugal)

Duration

• National registrations are valid for an initial period of 5 years. They can usually be renewed for additional periods of 5 years, up to a maximum which vary between 10 and 50 years according to the law of each country

National examples of Maximum Duration of Protection

10 years: Australia, Canada, China

12 years: Taiwan

14 years: United States of America

15 years: Benin, Brazil, Egypt, Japan, Singapore, Russia, Ukraine

25 years: Bulgaria, France, Germany, Italy, Romania, Switzerland Turkey

50 years: Monaco

The Hague Agreement Concerning the International Registration of Industrial

Designs

Denis Cohen, WIPO

Purpose of the the Hague Agreement

• The Hague Agreement is an international registration system which offers the possibility of requesting protection for industrial designs in several countries, by means of a single international application filed with WIPO.

• Under the Hague system, therefore, a single international application replaces a whole series of national applications which, otherwise, should have been effected at the national level with different national Offices.

National Route

• with national Offices

• different procedures

• different languages

• fees paid in local currency

• (usually) througha local agent

VS International Route

with WIPO only

one procedure

one language

fees paid in Swiss francs

local agent not necessary

The Hague system: An Alternative to the National Route

The Hague Agreement

• Participation of a State to the Hague system may be achieved through an accession:

– to the 1960 Act, and/or– to the 1999 Act

Contracting Parties

42 Geneva Act (1999) (including EU and OAPI) 16 Hague Act (1960)

58 Contracting Parties

Hague Union Members

Geneva Act (1999): OAPI, Albania, Armenia, Bosnia and Herzegovina, Botswana, Bulgaria, Croatia, Denmark, Egypt, Estonia, European Community, France, Georgia, Ghana, Hungary, Iceland, Kyrgyzstan, Latvia, Liechtenstein, Lithuania, Macedonia, Moldova, Mongolia, Namibia, Oman, Poland, Republic of Serbia, Romania, Sao Tome and Principe, Singapore, Slovenia, Spain, Syria, Switzerland, Turkey, Ukraine (36)

Hague Act (1960): Belgium, Belize, Benin, Côte d’Ivoire, D.P.R. of Korea, Gabon, Germany, Greece, Italy, Luxembourg, Mali, Monaco, Montenegro, Morocco, Netherlands, Niger, Senegal, Suriname (18)

London Act (1934): Indonesia, Tunisia (2)

Basic features of the Hague System (1)

Closed system:

1) Entitlement to use the Hague Agreement: need of an entitlement with a Contracting Party– either nationality– or domicile– or habitual residence– or real and effective industrial or commercial establishment.

2) Only Contracting Parties bound by the Hague Agreement may be designated. (Protection in third countries may be obtained only by way of national or regional applications filed individually with the Office of each country in question).

Basic features of the Hague System (2)

• An international application does not require any prior national deposit. A design may be deposited and protected for the first time at the international level through the Hague Agreement.

• An international deposit is normally sent directly to WIPO by the applicant.

• An international application may be filed in either English or French (at the applicant’s choice).

Contents of the International Application

• A single international deposit may comprise several different designs (“multiple deposit”), up to a maximum of 100

• All designs included in a deposit must belong to the same class of the international classification of Locarno : the international deposit is therefore “monoclass”

• The international application must contain, inter alia, a reproduction of the designs together with the designation of countries where protection is sought.

Cost of an International Application

An international application is the subject of three sets of fees:

– a basic fee (397 CHF for the first design and 19 CHF for each additional design);

– a publication fee (17 CHF per reproduction);

– a designation fee for each designated States (42 CHF for the first design and 2 CHF for each additional design) OR individual fee

Examination as to the form by the International Bureau

• When WIPO receives an international application, it checks that it complies with the prescribed formal requirements.

• Being solely a formal examination, WIPO does not appraise in any way the novelty of the designs and is therefore not entitled to reject an application on this ground (or any other substantive grounds).

Publication

• An application complying with the prescribed formal requirements is registered by WIPO and such registration is published in the International Designs Bulletin.

• This Bulletin is published electronically, on WIPO’s Internet site.

• Publication of registrations in this Bulletin takes the place of national publication

Examination by the Office: Possibility of Refusal (1)

• Upon publication of the Bulletin, each Office must identify the international registrations in which it is designated in order to proceed to the substantive examination provided for by its own legislation.

Examination by the Office: Possibility of Refusal (2)

• Following such examination. Each Office has the right to refuse protection, in its territory, to an international design, if it does not fulfil the conditions of protection provided for by its national legislation.

• However, a refusal may not be based on the ground of non-compliance with formal requirements, since such requirements must be considered as already having been satisfied following the examination carried out by WIPO.

Examination by the Office: Possibility of Refusal (3)

– A refusal of protection must be notified to WIPO within six months from the date of publication. In the event of refusal, the holder has the same remedies against the decision of refusal as he would have had if he had deposited the design in question directly with the national Office concerned.

– If no refusal is notified within the six month time limit by the Office, it automatically follows that the international registration enjoys protection in the State concerned.

Protection Governed byDomestic Law

The system of international registration of industrial designs is a purely procedural treaty. It does not

– determine the conditions for protecting a design;

– determine the type of examination to be carried out by an Office;

– determine the scope of protection.

All these questions are governed by the domestic legislation of each designated country.

Duration

• International registrations are valid for an initial period of five years. They can be renewed for two additional periods of five years (i.e., a minimum period of protection of 15 years).

• Furthermore, if the domestic legislation of a Contracting State allows a term of protection of more than 15 years, then the international registration may be renewed in respect of that State for additional periods of five years, up to the expiry of the total

term of protection allowed for such national registrations.

The Community Design

Mark Kennedy - External Relations (O.H.I.M.)

• The Unregistered Community Design:

automatic protection as from first disclosure in

the Community (3-years protection maximum)

• The Registered Community Design: protection

by registration at OHIM (25 years protection)

Two types of Protection System

• The Unregistered Community Design: protection

requires the proof that the defendant’s design

results from a “copy”

• The Registered Community Design: protection

only requires that the defendant’s design is

confusingly similar (no need to prove a “copy”)

Enforcement

1. Examination as to the form

2. Examination as to the substance (Grounds for non-acceptance)

• Does not meet the definition of a design• against public policy and morality

Examination Process

• Protection (or not) applies necessarily to

all (27) EC Member States

• Assignments can only relate to the

whole EC territory

Unitary Protection System