What is an industrial design?
An industrial design is the ornamental or aesthetic aspect of an article. The design may consist of three-dimensional features, such as the shape or surface of an article, or of two-dimensional features, such as patterns, lines or color. Industrial designs are applied to a wide variety of products of industry and handicraft: from technical and medical instruments to watches, jewelry, and other luxury items; from housewares and electrical appliances to vehicles and architectural structures; from textile designs to leisure goods. To be protected under most national laws, an industrial design must be new and/or original. Novelty or originality is determined with respect to the existing design corpus. An industrial design is primarily of an aesthetic nature, and does not protect any technical features of the article to which it is applied .
Why protect industrial designs?
Industrial designs are what makes a product attractive and appealing; hence, they add to the commercial value of a product and increase its marketability.
When an industrial design is protected, this helps to ensure a fair return on investment. An effective system of protection also benefits consumers and the public at large, by promoting fair competition and honest trade practices.
Protecting industrial designs helps economic development, by encouraging creativity in the industrial and manufacturing sectors and contributes to the expansion of commercial activities and the export of national products.
What is the grace period?
The existence of a grace period and the corresponding requirements can be provided by national or regional laws applicable in some countries. If so, the law can allow the filing of an application for registration of an industrial design after its disclosure, within a limited time period from the date of disclosure (generally six months or a year).
During the grace period, the product which constitutes the industrial design or in relation to which the industrial design is used could in particular be commercialized without destroying the novelty of the industrial design and it could still be possible to file an application for registration in the country concerned before the expiry of the grace period.
How can industrial designs be protected?
In most countries, an industrial design must be registered in order to be protected under industrial design law. As a general rule, to be registrable, the design must be "new" or "original". Different countries have varying definitions of such terms, as well as variations in the registration process itself. Generally, "new" means that no identical or very similar design is known to have existed before. Once a design is registered, the term of protection is generally five years, with the possibility of further periods of renewal up to, in most cases, 15 years.
Depending on the particular national law and the kind of design, an industrial design may also be protected as a work of art under copyright law. In some countries, industrial design and copyright protection can exist concurrently. In other countries, they are mutually exclusive: once the owner chooses one kind of protection, he can no longer invoke the other.
Under certain circumstances an industrial design may also be protectable under unfair competition law, although the conditions of protection and the rights and remedies ensured can be significantly different.
What cannot be protected by industrial design rights?
Designs that are generally barred from registration in many territories include:
- designs that do not meet the requirements of novelty, originality and/or individual character;
- designs that are considered to be dictated exclusively by the technical function of a product; such technical or functional design features may be protected, depending on the facts of each case, by other IP rights (e.g. patents, utility models or trade secrets);
- designs incorporating protected official symbols or emblems (such as the national flag);
- designs which are considered to be contrary to public order or morality.
Some countries exclude handicrafts from design protection, as industrial design law in these countries requires that the product to which an industrial design is applied is “an article of manufacture” or that it can be replicated by “industrial means”.
What rights are conferred by industrial design protection?
When an industrial design is registered, the holder receives the right to prevent unauthorized copying or imitation by third parties. This includes the right to prevent all unauthorized parties from making, selling or importing any product in which the design is incorporated or to which it is applied. Because industrial design rights are territorial in nature, this right is limited to the territory for which the design is registered.
How extensive is industrial design protection?
Generally, industrial design protection is limited to the country in which protection is granted. Under the Hague Agreement Concerning the International Registration of Industrial Designs, a WIPO-administered treaty, a procedure for an international registration is offered. An applicant can file a single international application with WIPO. The applicant can designate as many Contracting Parties as he wishes.
How can you enforce your rights when your industrial design is being infringed?
In case of infringement, the holder of industrial design rights could, firstly, decide to send a “cease or desist letter” to the alleged infringer, informing him of a possible conflict between his industrial design rights and the alleged infringing product and asking him to cease said infringement. If the infringement persists, the holder of the industrial design rights could decide to take all appropriate legal measures against the infringer, as provided for by the applicable law.
The enforcement of industrial design rights may be a complex issue for which it is usually advisable to seek professional assistance from a lawyer who would in principle be the competent person to provide you with advice on how to settle any dispute.