Industrial Designs

• May 24, 2022
• Maichael Bessada

1. What is an industrial design?[1]

In everyday language, an industrial de-sign generally refers to a product’s overall form and function. An armchair is said to have a “good design” when it is comfortable to sit in and we like the way it looks. For businesses, designing a product generally implies developing the product’s functional and aesthetic features, taking into consideration issues such as the product’s marketability, manufacturing costs, and ease of transport, storage, repair, and disposal.

From a legal perspective, an industrial design refers to the ornamental or aesthetic aspects of a product. If certain conditions are met, these aspects may be protected as industrial designs, a form of intellectual property (IP). Such protection does not cover the technical or functional aspects of a product. So in the example above, only the appearance of the armchair could be protected as an industrial design; any legal protection for technical or functional aspects would involve other IP rights.

Industrial design is relevant to a wide variety of industrial, fashion, and handicraft products; from technical and medical instruments to watches, jewelry, and other luxury items; from household products, toys, furniture, and electrical appliances to cars and architectural structures; and from textile designs to sports equipment. Industrial design is also important in relation to packaging, containers, and the “get–up” of products.

Generally, an industrial design may consist of:

• three-dimensional features such as the shape of a product;
• two-dimensional features such as ornamentation, patterns, lines, or color of a product;

• a combination of these things.

Example of a three-dimensional design

The functions of creative designs in the business

2. Why protect industrial designs?

Protecting designs should be part of the business and investment strategy of any designer or manufacturer, for the following reasons:

• A registered industrial design gives the owner an exclusive right to prevent unauthorized copying or imitation by others, thereby strengthening the owner’s competitive position and helping them obtain a fair return on investment made in creating and marketing the product.

• Design can add considerable marketing value to a product. It makes a product attractive and appealing to customers, and may even be its unique selling point.

• Registered industrial designs are business assets that can increase the commercial value of a company and its products. The more successful a design is the higher its value to the company.

• The exclusivity provided by a registered design right allows an owner to license others to use the design for a fee or to assign or sell the design right to others.

Protecting Industrial Designs

• What rights are provided by industrial design protection?

In most countries, an industrial design must be registered at the appropriate IP office in order to be protected under industrial design law. Once registered, an exclusive right to prevent unauthorized copying or imitation of the product may be obtained.

This means that the owner of such a right may prevent unauthorized third parties from making, selling, or importing articles bearing or embodying a design, which is a copy, or substantially a copy, of the registered design, when such acts are undertaken for commercial purposes.

Registration of industrial designs encourages fair competition and strengthens honest trade practices, which, in turn, stimulates creativity and promotes the production of a diverse range of aesthetically attractive products.

• Who may apply for industrial design protection?

In general, the persons who created the design or, if they are working under an employment contract, their employer, can apply for registration. The applicant can be either an individual (e.g., a designer) or a legal entity (e.g., a company). In either case, the application may be made directly or with the assistance of an IP agent. A foreign applicant would be required to be represented by an agent duly authorized by the relevant IP office.

• Where can an industrial design be registered?

To register an industrial design a national application must be filed at the IP office of the country where protection is sought or a regional application filed at the IP office of an intergovernmental organization such as the European Union or the African Intellectual Property Organization. Alternatively, an international application may be filed with the International Bureau of the World Intellectual Property Organization (WIPO). For more information on how to file an international application and the Hague System for the International Registration of Industrials Designs, see later in this guide “Protecting Industrial Designs Abroad.”

• What can be registered as an industrial design?

The IP office usually examines the formal requirements for an application, such as the requirement to include a good quality reproduction of the industrial design or that the required fees are paid. Many IP offices also carry out a substantive examination to determine whether the industrial design is registrable.

In general, an industrial design must meet one or more of the following requirements to qualify for registration:

• It must comply with the definition of a design under the applicable law. For example, in some jurisdictions, a logo may not be registered as an industrial design because it is not considered to be a product.

• The design must be new. A design is new if no identical design has previously been made available to the public. Designs are deemed identical if their features differ only in immaterial details.

• The design must be original. A design is original if it has been independently created by the designer and is not a copy or an imitation of existing designs. Designs are not original if they do not significantly differ from known designs or combinations of known design features.

• The design must have individual character. This requirement is met when the overall impression that a design produces on an informed user differs from the overall impression produced on such a user by any other design which has already been made available to the public. In assessing the individual character of a design, the degree of freedom of the designer in developing it shall be also taken into consideration.

Example of a logo

Traditionally, designs relate to features of manufactured products, such as the shape of a shoe, the design of an earring, or the ornamentation on a teapot. In the digital world, however, design protection is gradually extending to new products and types of design. These include, for instance, electronic desktop icons generated by computer codes, typefaces, graphic displays on computer monitors and smartphones, and so on.

• What designs cannot be protected through design rights?

Designs that cannot be protected include:

• Designs that do not meet the requirements of novelty, originality, and/or individual character as discussed above.

• Designs are dictated exclusively by the technical function of a product. Such technical or functional design features may be still protected by other IP rights (e.g., patents, utility models, or trade secrets), depending on the facts of each case.

• Designs incorporating protected official symbols or emblems, such as the national flag.
• Designs are considered to be contrary to public order or morality.

It is also important to note that some jurisdictions exclude handicrafts from design protection, as their industrial design law requires that the product to which an industrial design is applied be “an article of manufacture” or replicated by “industrial means.”

Depending on the applicable legislation, there may be further restrictions on what can be registered as a design, so it is advisable to consult an IP agent or the relevant IP office.

• How must an application for registration of an industrial design be filed?

As indicated above, some IP offices complete the registration of the design after having undertaken a purely formal examination to ensure that administrative formalities have been complied with, while many other IP offices may also conduct a substantive examination by checking the novelty and/or originality of the design application against existing designs on their registers. Therefore, the contents of an application for registration of an industrial design may be different from one jurisdiction to another.

However, there are some common requirements for making national/regional applications. In general, to register an industrial design, the following steps must be taken:

• Fill in the application form provided by the national or regional IP office, stating the applicant’s name, contact details, and legal representative, if any. Reproduction(s) of the industrial design(s) for which protection is being sought may be included if so required by law or if the applicant wishes to do so; the formats/dimensions are usually specified in the application form.

• •  Depending on the jurisdiction, further requirements may have to be satisfied. For example, in some countries, a written description of the industrial design may be required or the option to file one may be given. The description concerns the features of the industrial design or its reproduction. Furthermore, in some countries, an oath from the creator or a declaration of inventorship may be required to be filed.

• Pay the relevant filing fee.

• The applicant may choose to have an IP agent represent or assist him or her in filing the application and completing the registration process. In some countries, the assistance of an IP agent is compulsory. In that case, a “power of attorney” will have to be filed to make the appointment.

Once an industrial design is recorded in the industrial designs register of the IP office, the office issues a registration certificate to the holder. Most IP offices publish the recording of industrial de-signs in their official Designs Gazette. In some jurisdictions, it is possible to request deferment of publication, in which case the industrial design will be kept secret for a certain period that may vary according to the relevant law. Deferring publication of an industrial design for a certain period may be desirable for strategic business reasons.

• Can you apply for the registration of many different designs through a single application?

Many jurisdictions provide for a maximum number of industrial designs that may be contained in one application (e.g., up to 100 designs), provided that those designs belong to the same class of product. For example, if there is an intention to protect an industrial design for a lamp and a car, two separate applications would have to be filed since “lamps” and “cars” do not belong to the same class of products.

International classification

Industrial designs are generally classified or grouped into “classes” for ease of retrieval. When applying for a registered design right, the class of products for which the design is intended to be used may have to be indicated. Most IP offices use the International Classification for Industrial Designs (Locarno Classification). The Locarno Classification and the Locarno Agreement Establishing an International Classification for Industrial Designs are both available on the WIPO

10-Should the design be kept

confidential before registration?

The actual costs of industrial design protection vary significantly from country to country, so it is important to consider the different costs that may be involved in the process:

1. There will be an application/registration fee to be paid to the IP office. The amount of the fee may depend on the number of designs to be registered or the number of reproductions submitted for each design. Details of fees can be obtained from the IP agent or from the relevant IP office.

• There will also be costs associated with the services of an IP agent, if an applicant chooses to use an agent or if their use is required by the relevant IP office.

• Most IP offices require the payment of a renewal fee to maintain the exclusive right over an industrial design. The renewal fee is usually paid on a five-year basis.

• There may also be costs associated with the translation of the relevant documentation if the industrial design is to be protected abroad.

Keeping the design confidential is absolutely crucial since the design must be new to qualify for protection. If the design is shown to others, it is advisable to do so within the framework of a confidentiality agreement that makes it clear that the design is confidential.

A design that has already been disclosed to the public, for example by having been advertised in a company catalog or brochure, may no longer be considered new. It may become part of the public domain and no longer be protected unless the applicable law provides for a “grace period” or unless the priority of an earlier application can be claimed.

11- Who owns the rights over an industrial design?

The creator of a design, i.e., the designer, is usually the first owner of the design unless there are special circumstances. For example, in most jurisdictions, if an employee has developed a design under the terms of his or her employment contract – that is, during working hours within the enterprise and as part of his or her regular duties – the design and the related rights will belong to the employer, or the designer may be required to transfer them to the employer through a formal written assignment.

If the design was developed by an external designer under contract, the rightswill generally belongs to the company that commissioned the design. In such cases, it is considered that the design was produced for the use of the person who commissioned the design, who is, therefore, the owner. Misunderstandings at a later date can be avoided by clarifying the issue of ownership of rights in the original contract with the designer. Bear in mind that the designer of the product may have automatic copyright protection over the design, so this issue should also be covered in the contract.

12-. Licensing industrial designs

Industrial designs are licensed when the owner of the design (the licensor) grants permission to another person (the license to use the design for mutually agreed purposes. In such cases, a licensing contract is signed between the two parties specifying the terms and scope of the agreement.

Authorizing others to use industrial de-signs through a licensing contract will enable the licensor to receive an additional source of revenue and it is a common means of exploiting the exclusivity over registered designs conferred by the design right. It also enables the licensor to enter markets that it might not otherwise have been able to enter.

Licensing contracts often include limitations as to the countries where the licensee may use the design, the time for which the license is granted, and the type of products for which it can be used. In order to license the use of a design in foreign countries, the licensor should have obtained, or at least applied for, industrial design protection in those countries. If not, the design is not protected in those countries and the issue of granting another the right to use such a design does not arise. Protecting industrial designs abroad is discussed in the next section of this booklet.

Agreements to license industrial designs are often included in broader licensing agreements, which cover all aspects of a product, not just the aesthetic elements.

13- Protection of an “unregistered design”

In some jurisdictions, it is possible to obtain limited industrial design protection for unregistered designs, but only for a short period. This is the case, for example, in the European Union, where un-registered design protection is available and lasts three years from the date on which the design was first made available to the public within the territory of the European Union.

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[1] – Looking Good, An Introduction to Industrial Designs for Small and Medium-sized Enterprises, Intellectual Property for Business Series, Number 2, World Intellectual Property Organization