When you
register a design, you protect the external appearance of the article or
non-physical product and have the right to control its use; as an owner of the
registered design, you can prevent others from using the design without your permission;
which permits you to use your registration to protect your market share by
barring others from copying, license it to third parties for commercial returns
or sell the design for monetary returns.
Furthermore,
let us elaborate more the benefits, term of protection and additional facts
about designs:
In general, a
design is the outer outlook of an article that a naked eye can see; the
definition of a design as per the act provides means only the features of
shape, configuration, pattern, ornament or composition of lines or colors
applied to any article whether in two dimensional or three dimensional or both
forms, by any industrial process or means; whether manual, mechanical or
chemical, separate or combined, which in the finished article appeal to and are
judged solely by the eye, but does not include any mode or principle of
construction or anything which is in substance a mere mechanical device, and
does not include any trademark or property mark or artistic work.
The penalties for infringement of a
registered design are substantial and can include damages, an account of
profits, litigation costs, delivery up of infringing articles and surrender of
machinery used to make them. Generally, litigation is not necessary to prevent
infringement of a registered design, the existence of a design registration can
be sufficient to deter competitors from copying and adequate marking will warn
them of the existence of proprietary rights in the design. The rights conferred
by a design registration can be sold or licensed, manufacturers are often
reluctant to enter into a licensing agreement unless an application to register
the design has been filed, due to the fact that the existence of a design
registration will ensure their investment will not be unfairly diminished by
competitors. Design registrations may also be a useful tool for preventing
parallel imports, it offers greater protection and misappropriation of a new
design is less likely if an application is filed before approaching potential
manufacturers and investors.
Registrable designs include designs which
are not purely functional and which have not been previously applied to any
manufactured article. There are a few articles specifically exempt from design
registration. For a design to be registrable it must be novel, it is therefore
important to avoid disclosure of the design before a design application is
filed, a non-confidential disclosure includes such things as offers for sale,
advertising, use or display of the article; conversely, there are some
exceptions and we can advise whether these apply to you or not.
A design registration should protect the
design of a product in the form in which it is marketed; therefore, you should
not file a design application until you have developed the design of the
article to a stage where it is ready for production and marketing; in some
circumstances a single design application can be used to gain protection for
more than one product. We encourage our clients to consult us early to ensure
the timing of a design application is most advantageous to their situation.
It is necessary to file the application,
supporting documents and proceed for design registration professionally, to do
so following the 7 steps below is mandatory:
Ø
Search: Comprehensive search must be conducted on each industrial
design in order to determine whether the design is available for registration
while considering its various design aspects.
Ø
Investigation: The investigation process is conducted in order to
locate additional information on potentially conflicting designs and to
determine whether the conflicting designs are registered or used in the
targeted market and to which extent their protection encompasses.
Ø
Filing a
design application: Application documents and
representations defining the design are lodged at the concerned authorities. It
is only safe to disclose the design, conduct market research, publish details
relating to the design or offer it for sale etc.; once the application has been
filed. The design application, when filed, will receive a filing date and an
application number; marking your product and related literature with the
application number which acts as a deterrent to would-be duplicators.
Ø
Examination: A design application will usually be examined after filing
to ensure it meets formality requirements; a search of previous design
registrations is also conducted to determine if the design is a novel and
registrable. Often an examination report does not issue, and the application proceeds
straight to registration, if an examination report does issue your
representative must forward it to you together with their recommendations for
responding.
Ø
Registration,
Publication and Grant: Design registration is an
industrial property right that protects the external appearance of two or three
dimensional products before use. The intended Industrial design application need
to be prepared by experts for filing in accordance to each country’s requirements,
and consequently filed under Locarno classification for some specific countries.
The design in some jurisdictions is published in the Official Gazettes and
followed by an interval period to allow for third party’s opposition and
register afterwards, assuming the latter does not occur but in most countries
details of an application are not publicly available until the design is
registered and the content of abandoned applications is never disclosed. Proceedings
for infringement cannot be taken until the design is registered; on the other
hand, some jurisdictions issue the registration certificates prior to final
publication.
Ø
Maintenance: The protection need to be renewed, in order to keep your
intellectual property registrations up-to-date, your representative have to
provide a maintenance services, which insures the renewal of designs
registrations in their designated countries. The purpose of a maintenance
procedure is to ensure that no registrations are canceled due to failure to
file necessary and time sensitive documents. The terms of a design registration
are between 15-25 years from the date of filing depending on each country
regulations. This is subject to the payment of renewal fees, which means your
representative needs to maintain a renewals records and remind you when renewal
fees are due.
Ø
Protection: Intellectual property protection services is an
on-going program designed to protect, maintain and enhance the value of the
design or your IP rights generally, when choosing your IP Law Firm make sure
they have a trusted and well-formed IP watch program, aimed at discovering
designs being applied for or used in the marketplace that may infringe or
dilute the uniqueness and value of your design.
In order to prepare a design application
a representations of the product embodying the design is required. Your
representative, of course, must provide assistance in preparing suitable
representations, as it is a crucial part of an application, and of any
resulting registered design, there are often strategic considerations involved
in preparing the representation; therefore, to file a design application the
following is required:
Ø
The full
name, address and nationality of the applicant(s);
Ø
The full
name, address and nationality of the author of the design if different from the
applicant;
Ø
Information
about the unique features of the design; and,
Ø A sample
or accurate drawings of the product in the form in which it will be marketed.
An experienced professionals can help
significantly improve chances of successful design registration by filing a
professional application, addressing all the aspects of the designs act. The
registration is provided only by the registrar based on the facts and premises
of each case; however, filing a design registration application does not
guarantee registration of the design in question.
When it comes to the world of
intellectual property law, you need trusted advisors who will help you to
maximize your assets and protect what makes them unique; we take into
consideration that your business has invested time and resources and your IP rights
should remain yours to exploit to its full potential.
At Scutum IP Law Firm, our attorneys are specialists
in intellectual property, they practice and operates worldwide and works across
key jurisdictions to provide exceptional IP strategies and advices. Delivering
a complete range of IP legal services, our strength lies in our global
capability paired with a collaborative approach and through our extensive
network of trusted international associates, we proficiently clear new designs,
strategically manage local and international portfolios, and secure registered
rights in a manner that is both commercially practical and cost-effective. Our
professionals assure you an unparalleled experience and knowledge in design
enforcement, our expertise is boundless, and includes an array of both
internationally and local designs protection, covering everything from consumer
goods to financial services.
From spearheading primary cases, to
managing global designs enforcement programs across multiple continents, you
can be sure we have the experience to support you in the most appropriate way. Our
team serves as trusted counsellors to some of the most valuable brands in the
world and can assist you with all of your designs legal needs. Above all, we
shape our service to match your needs, we don't take a one-size-fits-all
approach, but work with you to tailor strategies and fee arrangements that best
suit your business.
If you have more specific questions about design registration, please do
not hesitate to contact us.
Kindly note that, the
above information is simplified and must not be taken as a definitive statement
of the law or practice.