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The document discusses the importance of protecting industrial designs as a key component of business strategy, highlighting benefits such as exclusive rights, brand strengthening, and opportunities for licensing or selling designs. It outlines various multilateral agreements and national laws that govern industrial design protection, emphasizing the need for novelty and originality in design registration. Additionally, it notes that effective design protection can significantly contribute to business growth and national development.
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0% found this document useful (0 votes)
6 views15 pagesModule IV
The document discusses the importance of protecting industrial designs as a key component of business strategy, highlighting benefits such as exclusive rights, brand strengthening, and opportunities for licensing or selling designs. It outlines various multilateral agreements and national laws that govern industrial design protection, emphasizing the need for novelty and originality in design registration. Additionally, it notes that effective design protection can significantly contribute to business growth and national development.
Uploaded by
Jacky KangCopyright
© All Rights Reserved
We take content rights seriously. If you suspect this is your content, claim it here.
Available Formats
Download as PDF, TXT or read online on Scribd
MODULE IV Industrial Designs
WHY ARE DESIGNS IMPORTANT
THE ISSUE:
The protection of industrial designs should form an integral part of any business strategy.
What are the main reasons to protect industrial designs?
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WHY ARE DESIGNS IMPORTANT?
RETURN ON INVESTMENTS:
- Improve sales/marketability due to design- see for some iconic designs
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WHY ARE DESIGNS IMPORTANT?
EXCLUSIVE RIGHTS:
Protection provides exclusive rights for at least 10 years, so as to prevent or stop others from
commercially exploiting or copying the industrial design.
STRENGHTEN BRANDS:
Industrial designs can be an important element of a company’s
brand. Protecting industrial designs contributes to protecting a
company’s brand.
Brands are often build based on talent of individual designers.
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WHY ARE DESIGNS IMPORTANT?
OPPORTUNITY TO LICENSE OR SELL:
Protection provides rights that may be sold or licensed to another enterprise, which will then be
a source of income for the owner of the rights.
REWARD:
Protecting industrial designs rewards and encourages creativity.
Most countries foresee a system of reward for employees-creators with a right to remuneration
distinct from their regular salary.
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DEFINITIONS- I
The concept of industrial design, in a lay or general sense, refers to the
creative activity of achieving a formal or ornamental appearance for mass-
produced items that satisfies both the need for the item to appeal visually to
potential consumers, and the need for the item to perform its intended function
efficiently.
In a legal sense, industrial design involves a right recognized in many
countries, usually related to a registration system, which protects the
ornamental or aesthetic and non-functional features of a product.
As per the words of WIPO’s former Director General Francis Gurry on World
IP Day in 2011 “Designs are the language of objects”.
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MULTILATERAL AGREEMENTS- PARIS CONVENTION
Makes applicable to designs the general principle of “national treatment” namely each
Member State shall protect on his territory the industrial designs of nationals of other
Member States as it protects the industrial designs made by its own nationals.
The PC grants to all nationals of Member States a right of priority, lasting six months, to
file an application for industrial designs in other countries of the Paris Union.
Art. 5quinquies PC, states that “industrial designs shall be protected in all the countries of
the Union”, there is no provision regarding the legal form of protection that shall be
granted, each Member is free to define what an industrial design is and how it is
protected.
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MULTILATERAL AGREEMENTS- THE BERNE
CONVENTION
Protects “works of applied art” within the broader category of “literary and artistic works”.
(art. 2(1) BC ).
BC leaves all Member States free to protect industrial designs through copyright law or by way
of a special regime (i.e. a separate intellectual property right protecting industrial designs) or
by both regimes of protection (copyright law and design law).
In some countries protection may exist under a sui generis registration system or as
unregistered design, under general patent law, utility model law, copyright law, trademark law
and/or unfair competition law.
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MULTILATERAL AGREEMENTS- THE HAGUE
AGREEMENT
Administered by the World Intellectual Property Organization WIPO.
Signed on November 6, 1925 and comprises to date 74 countries.
Offers and international registration procedure: one application filed with the International
Bureau of WIPO, in one language, with one set of fees in one currency (Swiss Francs).
Registration produces the same effects in each of the designated countries, as if the design had
been registered directly with each national office, unless protection is refused by the national
office of that country.
Applicant must be a national of a State party to the Hague Agreement, or have a domicile in a
State party to the Hague Agreement, or have an habitual residence in a State party to the
Hague Agreement, or have a real and effective industrial or commercial establishment in the
territory of a State party to the Hague Agreement.
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MULTILATERAL AGREEMENTS- TRIPS
Administered by the World Trade Organization WTO. The treaty completes the provisions of
the PC but leaves a lot of freedom to Member States.
Members are required to protect “industrial designs” but remain free to exclude “designs
dictated essentially by technical or functional considerations” and to choose the legal means to
protect such industrial designs. Therefore, copyright law, design patents, or a sui generis regime
are all viable alternatives.
Members have to protect “independently created industrial designs that are new or original”.
Protection shall be of a minimum of ten years.
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REGIONAL LAWS: THE EXAMPLE OF THE EU
The Regulation on Community Designs (EC) 6/2002 of December 12, 2002 sets up a
Registered Community Design (RCD) and Unregistered Community Design (UCD) system.
Both design types can be protected if the design is new and has an individual character.
A RDC can be obtained through an application addressed at the European Union Intellectual
Property Office (EUIPO), noted that it is also possible to designated the EU through the Hague
system.
A UCD arises automatically and without any formality procedure, as a legal consequence of
the disclosure of the design to the public in such a way that the interested circles within the
European Union could be aware of its appearance.
The two systems are complementary.
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NATIONAL LAWS
National laws greatly differ:
Some countries offer protection under patent like registration procedure (ex: USA)
Some countries have sui generis protection systems (ex: the EU)
In some countries, industrial design and copyright protection exist concurrently (dual regimes). In
other countries, they are mutually exclusive: once the owner chooses one kind of protection, he can
no longer invoke the other or, at least, he cannot receive a broader protection under the other.
Differentiating copyright and design protection can be difficult sometimes since protection may
overlap or exclude each other. Purely artistic designs, (works of art) are generally protected
under copyright. On the other hand, creations for practical purposes fall under design.
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REGISTERED DESIGNS- REQUIREMENTS FOR
PROTECTION
A “design” generally means the appearance of the whole or a part of a product resulting from
the features of, in particular, the lines, contours, colors, shape, texture and/or materials of the
product itself and/or its ornamentation. Designs without graphic representation, invisible designs
and must fit designs (functional) are usually excluded from protection.
It is a requirement of all industrial design laws that protection through registration shall be
granted only to designs which are novel and/or original. Novelty may be absolute or relative
and some countries offer grace periods.
The concept of “originality” varies from country to country, sometimes being akin to that of non-
obviousness under patent law (e.g. under US law), other times approximating more that of
“distinctive character” of trademark law (e.g. under EU law) or that of “originality” under
copyright law (e.g. under UK law on unregistered designs). European Union law protects only
designs which have an “individual character”.
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REGISTERED DESIGNS- REQUIREMENTS FOR
PROTECTION
Differentiating copyright and design protection can be difficult sometimes since protection may
overlap or exclude each other. Purely artistic designs, (works of art) are generally protected
under copyright. On the other hand, creations for practical purposes fall under design.
To be protected it is usually required to file a design patent application, indicating the Locarno
class and presenting views of the design (up to 7 views for example in the EU).
It is useful to study examination manuals as the graphic representation rules are very strict and
graphic representation requirements differs among countries (ex: for broken lines, GUIs etc.)
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UNLOCKING POTENTIAL OF DESIGNS
Designs can be extremely
powerful to grow business. They
can support both country
development strategies (see
example of Korea) as well as
companies (in particular SMEs.
The Design Ladder is a
particularly useful tool.