Industrial Design Protection Essentials

What is an industrial design?

In terms of intellectual property, industrial design is considered as the appearance or ornamental aspects of the totality or a specific part of a product that makes it new and sets it apart from other potentially similar products in the market. The technical or functional features of the product are not taken into consideration at the time of obtaining protection for an industrial design.

What can be protected as an industrial design?

Industrial designs apply to a wide variety of handicraft or industrially made products: from packages to furnishing and household goods, from lighting equipment to jewelry, and from electronic devices to textiles. Industrial designs may also protect fonts or graphic symbols. Individual parts of a product which can be disassembled may also take advantage of industrial design protection.

What kind of protection do industrial designs grant?

The owner of a registered industrial design is entitled to prevent third parties from manufacturing, selling or importing items that display or incorporate its design or a copy of it when such acts are carried out for commercial purposes.

To obtain design protection it is necessary to file an application, including the relevant documentation and graphic representation of the design, before the corresponding institution.

In certain countries, industrial designs fall under the protection of patent law and are known as "design patents." Depending on the local law and the type of design, industrial designs may also be protected as creative works and get coverage under copyright law.

What is the Locarno classification?

The Locarno Classification is an International Classification for industrial designs, currently used in 54 countries. Additionally, the European Union Intellectual Property Office (EUIPO), the Benelux Intellectual Property Office (BOIP), the African Intellectual Property Organization (OAPI), and the African Regional Intellectual Property Organization (ARIPO) also use this Classification for the registration of industrial designs.

It consists of 32 classes and 219 subclasses with explanatory notes and an alphabetical list of products. Although its use is voluntary, it allows the filing of design applications referring to a single classification system, which facilitates searches for industrial designs and saves considerable work when documents are exchanged between IP offices.

How long does the protection of an industrial design last?

Industrial designs, unlike trademarks, cannot be renewed indefinitely and have a set lifespan. Generally speaking, they are granted for an initial period of 5 years, which can be renewed for successive periods of five years up to a total of 25 years in countries with the longest duration.

What are the differences between a design and a patent?

Industrial designs protect the specific appearance of a product, whereas patents do not protect aesthetics and focus exclusively on protecting the way that a technical problem is solved.

What can and cannot be protected as an industrial design?

The requirements that a design must meet to be granted protection are the following:

• Novelty: A design is considered new when no other identical design has been made accessible to the public before the date of filing of the application.
• Unique character: A design will be considered to have a unique character when the general impression produced on the consumer differs from the general impression produced on the same consumer when encountering any other design.
  Depending on the jurisdiction, only one of the above requirements may be requested and their evaluation may be more or less strict depending on the laws of each country.
• Possibility of being graphically represented: The way in which this requirement is materialized varies by territory. In some areas, ultra-realistic photos are accepted, while in others black and white drawings are required.

What cannot be protected as an industrial design?

• Colors, verbal elements and sounds are examples of what cannot be protected as a design, since they are not part of the ornamentation of a product. On the other hand, they may seek protection under trademark law.
• The designs whose appearance respond exclusively to the technical function of the product. It is possible that the technical or functional characteristics of these types of designs can be protected through other intellectual property rights (normally through patents or utility models).
• Designs that go against public order and certain moral standards. As a general rule, designs that reflect or promote violence or discrimination based on sex, racial or ethnic origin, religion or belief, disability, age or sexual orientation will be denied.

The registration process for Industrial Designs

What information is needed to register a design?

Generally speaking, the following information is required when filing an application for a design registration:

• The design title.
• The Locarno class(es) in which you seek protection (voluntary requirement).
• Brief description of the design.
• Complete personal details of the design’s author.
• Complete personal details of the design’s owner (in cases where the author and owner are not the same).
• Depending on the country, a Power of Attorney may be required.

In some countries, “families of designs” are allowed to be presented through a single application, thus allowing different products to be protected through a single registration, as long as they fall under the protection of the same Locarno class.

How long does it take for a design to be registered?

Registration time frames vary greatly depending on the jurisdiction. A design filed in the European Union that meets all formal requirements can be registered in one week, while the same design in the United States can take up to 2 years.

Is a substantial examination compulsory?

Contrary to what happens with trademark registration procedures where the process is quite homogeneous in all countries, industrial design registration procedures vary greatly from country to country. Please see the following countries as examples:

• European Union: The EUIPO does not conduct a substantial examination of the applications received. If the formal requirements are met, the design is registered without any further evaluation. The design will only be formally examined if it receives a nullity action filed by a third party.

• Australia: If the formal requirements are met, the design will be registered. Substantial examination is voluntary and it is up to the owner of the design to request it or not. If requested, additional fees must be paid.

• United States: In this country, the examiner conducts an examination for both the formal and the substantial requirements of the design. If all requirements are not met, the design will be denied.

Generally speaking, a registered design that has not gone through substantial examination allows its owner the right to sell the protected product in the country where it is registered without the worry of third parties restricting commercialization. However, exclusive rights are not granted and the design may have to compete with identical or similar designs in commerce.

Does an unregistered design grant any protection?

Some countries, mainly in Europe, have the concept of the “unregistered design”, which protects the specific appearance of a product for a period of 3 years counting from the date that the design was made accessible to the public. However, it is important to point out that the protection is weak and it only protects against identical copies of the same design.

Things to consider before filing an industrial design application

When should I file the design application?

This point is crucial when thinking about the strategy for your industrial designs. Considering that novelty and unique character are compulsory requirements in the majority of the offices in the world, it is highly recommended that the application of the design is submitted prior to its disclosure, otherwise, it may be considered as already part of public domain and the registration would therefore be denied.

If the industrial design has already been disclosed to the public (for example, through an advertisement published on the company's website), it may no longer be considered “new” or “original” and may become part of the public domain. However, some countries contemplate a “grace period” during which it is still possible to file the application after the disclosure of the industrial design. This period constitutes a safeguard for applicants who have disclosed their industrial design before submitting an application and usually last between 6 to 12 months.

Can I claim priority on a design application?

Yes. In terms of industrial designs, priority works in the same way as it does in trademarks. The filing of the first application for IP rights in a country that is a member of the Paris Convention concedes the applicant a Priority Right. In practice, the right of priority gives a period of time during which, if a second identical application is filed in a member country of the Convention, the filing date of the second application would be the same as the filing date of the first one.

Priority can only be claimed in the member countries of the Paris Convention. The information included in the subsequent applications must be identical to the first application through which priority is to be claimed. This means that the design, owner, and author (if they are not the same) must match and that changes are not allowed.

Industrial Designs International Agreements

As of today, the protection of designs is territorial and there is no international registry, nor are there any plans to create one in the near future. With the exception of certain regional agreements, applications must be filed country by country or through the Hague International Agreement via WIPO.

The Hague System, managed by WIPO (World Industrial Property Organization), offers a practical solution for registering industrial designs in more than 90 countries by submitting one single application. Contrary to how the Madrid system works with trademarks, it is not necessary to have submitted an application or to be the holder of a national / regional registry in order to submit an application.

What is a community design?

A community design is one that protects the appearance of a product in all countries that are part of the European Union through one single application. It has an initial validity of five years, which can be renewed for periods of 5 years up to a maximum of 25.

Other regional agreements

As in the trademark sector, there are some regional agreements that allow applicants to obtain protection in several countries through one single application. Currently, the regional agreements available for industrial designs are the European Union in Europe, and ARIPO and OAPI in Africa.

The benefits of Industrial Design registration

Industrial designs encourage the owners to invest efforts in making a product attractive and attract customers' attention. In addition, the design also motivates the consumer's choice since the appearance of a product can be a key element in purchasing decisions.

Below there are some examples that show some of the advantages a design registration provides to its owner:

• A registered design grants exclusive nationwide use.
• A registered design serves as a deterrent against third parties that would otherwise use identical or confusingly similar designs for identical or similar products.
• The possibility of licensing.

If you do not protect your industrial designs, you will not have exclusive rights over them in commerce. Therefore, your competitors could sell products on the market that incorporate your industrial design without having to obtain your authorization to do so.