Construction and Design

How do I protect my industrial designs?

In most countries, an industrial design must be registered in order to be protected under industrial design law. To register an industrial design you must file an application at the national industrial property office of the country where you are seeking protection.

When an industrial design is protected by registration, the owner is granted an exclusive right against unauthorized copying or imitation by third parties. This includes the right to exclude all others from making, offering, importing, exporting or selling any article in which the design is incorporated or to which it is applied. The laws and practices of the country or region determine the actual scope of protection of the registered design right.

Registration process

To register a design in your own country, normally you must go through the following steps:

• Fill in the application form obtainable at your national industrial property office. You will be requested also to provide drawings and/or photographs of the design(s) in question (standard) formats are usually specified).
• In some countries, you may also be required to file a written description or statement of the novelty of the industrial design(s). The description usually has to be of the design and not of the article to which it has been applied. It should be accurate and adequate in terms of its differentiation from any similar. earlier designs. It should cover all the distinctive aesthetic features of the design and should describe which features are the most important. In some countries, the examiner may ask for a physical sample of the design in order to be able to appreciate it better or feel its texture or material.
• Pay the appropriate filing fee.
• You may choose to employ an industrial property agent to assist you in filing the application and following through with the registration process. In that respect, you will also have to file a document certifying the powers of your representative.

Some offices register the design after undertaking an examination as to administrative formalities only. Others may check it against the existing designs on the register, for novelty and/or originality. More and more offices are accepting registration without checking for novelty and/or originality.

Once a design is registered, it is entered in the design register, published in the official design journal/gazette/bulletin and a design registration certificate is issued. In some countries/regions, it may be possible to request a deferment of publication, in which case the design will be kept secret for a certain period. Preventing publication for a period of time may be preferable for strategic business reasons

The term of protection for a registered industrial design varies from country to country, but is usually at least 10 years, and often longer (for example, 14 years for design patents in the United States, and 25 years under the registered Community design right of the European Union). In some countries, right-holders are required to renew their design protection every few years.

Generally, the person who created the design or, if that person was working under contract, the person's employer can apply for registration. The applicant can be either a natural person (eg a designer) or a legal entity (a company). In either case, the application may be made directly or through an agent. If you are applying from overseas you may be required to have an agent duly authorized by the industrial property office of the country to which you are applying.

Non-registered designs

Special attention needs to be paid to the European Union, where recent legislation has made it possible to obtain limited industrial design protection for a non-registered design, for three years from the date on which the design has been made public in the European Union. For longer and stronger protection, full registration is required. The non-registered design protection is meant to provide companies with the opportunity to test market their products before going through the effort and expense of registering designs, many of which may not succeed in the marketplace. Also, some designs may be marketed for a very short time only, especially in the fashion industry, with no intention for them to be registered.

Protecting designs through copyright

While this section focuses mainly on registering industrial designs, it is important to point out that, in some countries, there may be alternative ways of protecting industrial designs. Depending on the particular national law and the kind of design, one such alternative is copyright law. Copyright generally provides exclusive rights for literary or artistic works. As some designs may, in some countries, be considered works of art or applied art, copyright protection may apply and may represent an attractive option for SMEs.

Protecting designs as trademarks

Also, in some countries, if an industrial design function as a trademark in the marketplace, then it may be protected as a three-dimensional mark This could be the case when the shape of the product or its packaging is considered to have become a distinctive feature of the products made by a given enterprise.

Unfair competition

In many countries, industrial designs are protected under laws on unfair competition. Thus, a design may be protected against acts of slavish copying and acts that may lead to confusion, acts of imitation, use of third-party reputation, etc. However, protection under unfair competition is generally significantly weaker and infringement more difficult to prove.