Many are already familiar with certain intellectual property assets, such as trademarks or patents. However, despite their relevance and potential attractiveness to businesses, little is said about industrial designs and the advantages that an entrepreneur gains from registering them.
In strictly legal terms, an industrial design or drawing protects the external innovation or appearance of a product (or a part of it).
It is also understood that the design is composed of two-dimensional features, such as lines, contours and colors, as well as three-dimensional ones, such as shapes, materials, textures and ornaments; in short, all the features that have some relation to the aesthetic value of the product.
With this in mind, we will explore what you need to know about registering an industrial design.
The importance of industrial designs
The main purpose of a design is to make a product attractive and draw the attention of customers, as well as to influence the consumer's purchase decision.
In other words, the success or failure of a product's sales may be at least partly due to its appearance. This is why industrial designs can be very important, both for small and medium-sized enterprises (SMEs) and for larger companies, the sector of their activity being irrelevant.
Benefits of registering an industrial design
Fear of being copied is often the main reason that industrial designs are registered.
However, it is good for you to know and understand that registration is also the best way to prove authorship of a product’s design.
On one hand, it grants exclusive rights of use in the marketplace; on the other hand, it allows for economic benefits, through licenses or transfers of ownership.
Products that can be registered as industrial design
The word "industrial" has led a large part of the population to associate them with elements of industrial manufacture or machinery, although this is not necessarily true; the definition of "product" encompasses both artisanal and industrial products.
Here are some examples:
Well-known fashion brands such as Burberry have many products registered in various jurisdictions. This brand, for example, has its famous Scottish print, registered for products made of fabric in the United Kingdom and Spain.
Registering design prints are not limited to textiles, and this can be seen in the famous English stationery store Paperchase, which has registered designs for a large number of original drawings used in their stationery products.
Both simple machinery, such as food processors or hair dryers, and industrial machinery, such as baking machines, can be registered as industrial designs.
Cars, trucks, bicycles, tricycles, and even scooters are registrable as industrial designs.
Articles of daily life
Elements of decoration, kitchen designs, personal hygiene, entertainment, etc. are accepted as industrial designs.
Requirements for registering an industrial design
When an entrepreneur invests effort in a product and decides to protect it in order to obtain the exclusive right to prevent third parties from reproducing it, they must bear in mind that according to the law of the country in which registration is sought, the design must comply with one or both of the following two requirements:
The assessment of novelty and originality varies from country to country. An industrial design is generally considered to be new if it has not been previously disclosed to the public, and may be considered original if it differs significantly from known designs or combinations of known design features.
Depending on the applicable law, an application for the registration of an industrial design or the granting of a design patent may be filed in person or an agent may have to be appointed.
Why is the filing date important?
In view of the novelty requirement of most industrial design laws, the time of filing is essential.
According to this requirement, it is key to file an application for registration of a design before it is publicly disclosed, in order to prevent it from eliminating its novelty status.
For example, if the industrial design has already been disclosed to the public through an advertisement published on the company's website, it may no longer be considered "new" and may become part of the public domain.
However, some countries provide a grace period for filing the application after the industrial design has been disclosed. This means that a product can be marketed during the period of 6 or 12 months prior to the filing date of the application, depending on the jurisdiction.
Does an industrial design have to be registered to enjoy protection?
In most countries, an industrial design must be registered in order to enjoy protection as a "registered design" under industrial design law. In some countries, industrial designs are protected under patent law as "design patents”.
Some countries' industrial design laws grant "unregistered industrial designs" (i.e. without the need for registration) a type of protection limited in time and scope.
Depending on national legislation and the type of design, industrial designs may be covered by copyright protection as original works.
Additionally, and only if applicable, they can coexist with a patent for invention and with a trademark, all of which are separate registrations that are channelled through different procedures and governing bodies.
How long does the protection of these designs last?
The rights over an industrial design are granted for a limited period. The duration of protection for industrial designs varies from country to country, but usually lasts for at least 5 years.
In many countries, the total duration of protection is divided into successive renewable periods.
Industrial design rights are territorial. This means that these rights are limited to the country (or region) in which protection is granted.
If industrial designs are not protected, there are no exclusive rights over them, and therefore competitors could put an identical or very similar product on the market without having to ask for authorization.
This means that if a competitor or a third party manufactures, sells or imports products that incorporate a design that is a copy of an industrial design, in most cases no legal claim can be made if the design is not registered.
Furthermore, it is likely that copies of the industrial design will be sold at a lower price, since competitors do not have to recover the investments made throughout the creative process. This could reduce the market share for the product in question and damage a company's reputation.
Author: Blanca Palacin