Of the four pillars of intellectual property protection – patents, industrial designs, trademarks and copyrights – perhaps the most overlooked is that for industrial (ornamental) designs. In most countries, the available design protection is generally very narrow, with a minimal halo of protection around the exact design depicted in the application. Why would an applicant consider paying for such narrow protection as opposed to relying solely on trademark and/or patent protection to achieve the desired exclusivity for their product?
A little thought about market place dynamics, the goals of potential copycats or infringers and the critical importance of your product’s or brand’s identity will help answer this question. For some products, securing industrial design protection may not be cost effective, but for any product where the visual appearance provides all or part of the brand identification to the consumer, design protection is as critical as trademark protection. The visual appearance of a product communicates a promise established by the legitimate manufacturer that the product is genuine and will provide both the efficacy and the safety associated with the brand.
If a counterfeit product having the same or confusingly similar trade dress fails to fill the “promise” projected by the ornamental design of the product (or its package), the disappointment of the purchaser will most likely be directed toward the legitimate brand and not the counterfeit product as the customer is unaware that the product is not genuine. The situation is worse yet if the copycat product contains product that is unsafe. The legitimate brand may well face legal action from disappointed or harmed customers and the costs of defending their brand for an efficacy or safety issue that was not their fault, but the fault of some unknown copycat third party.
Protecting the ornamental design of one’s product and/or packaging provides the legal basis to help stop counterfeit product from destroying the legitimate brand’s market and defaulting on the legitimate brand’s visual promise of efficacy and safety. Realizing that most design laws provide a relatively narrow scope of protection beyond what is depicted in the drawings forming the basis of the design application, it is recommended that protection for embodiments similar in appearance, but outside the halo of equivalents, be filed.
The goal of these filings is to give the applicant the broadest scope of protection, covering similar designs that may prove confusing to the customer and making it more difficult for a potential infringer to capitalize on a legitimate product’s visual appearance. Helping to insure that the promise made by a product’s trade dress will not be harmed (or destroyed) by an illegitimate third party’s copycat product is critical to help maintain the “purity” of the reputation of the brand.
Because design laws vary by country, someone considering design protection should work closely with their local agent in each country. This will provide needed information regarding the procedures, scope of protection, and any other requirements to ensure adequate industrial design protection. As a start, a summary of key provisions of the industrial design systems in India and the ASEAN countries follows. The authors would like to thank Eileen Hughett, who manages the International Design Filing Center for Procter & Gamble for sharing her experience and knowledge of the world’s design laws and procedures in preparing this summary. Similar information from other countries of commercial interest should be assembled to allow informed decisions regarding if and where to seek industrial design protection for any given product.
A comparison of primary features of design laws in India and the ASEAN countries is contained in the table.
In Indonesia, it is possible to register “creations of forms, configuration or compositions of lines or colors, or lines and colors, or the combination thereof in three dimensional or two dimensional form which give an aesthetical impression.” Both drawings and photographs which clearly disclose the design are acceptable.
Once a design registration is published, an opposition against the registration can be filed by third parties within three months. Following publication, which can be deferred for up to 12 months and, without regard to any opposition, a limited substantive novelty examination is performed by the Patent Office. If a Refusal is received, the applicant has three months to appeal to the Commercial Court.
While no injunctions have yet been issued, both civil and criminal penalties are possible if infringement can be proved.
In India, a design is defined as “the features of shape, configuration, pattern, ornament or composition of lines or s applied to any article (whether in two-dimensional or three dimensional form or in both) … which in the finished article appeal to and are judged solely by the eye.”
While two dimensional patterns are accepted in India, they must be applied to an article, such as a paper sheet, or fabric. Where the design is a repeating pattern, each representation is required to show one complete pattern and a sufficient ongoing section of the repeat, so that the claim can be understood.
In the past, only solid line drawings were acceptable but, India has begun an experiment in accepting dashed lines. It is not certain that the practice will be adopted as permanent, but currently, dashed lines will be accepted in an application; it remains to be seen how the dashed lines will be interpreted.
Photographs clearly disclosing the article are acceptable in lieu of drawings.
Because of India’s “one embodiment” rule, each application can contain only one variation. Protecting multiple embodiments can become expensive unless restricted to a relatively small number of embodiments.
While a “composition of colour” is protectable in India, a black and white rendition affords broader protection. A claim to a black and white version may well save the cost of multiple applications. When such an application, based on a priority application with multiple embodiments, in both colour and black and white, is filed, the patent office prefers that a colour version be filed in India and the colour disclaimed in the specification.
The novelty examination performed by the Indian Patent Office is restricted to designs registered in India. A petition for cancellation, however, can be lodged based on: a) previous registration in India, b) publication in India or in any other country prior to the filing/priority date, c) a design which is not new or original, d) the design does not fall within the definition of a design.
When a design registration is filed it is considered also to be protected by copyright until more than 50 copies have been produced by an industrial process. Following such manufacture, copyright protection ceases to exist.
Coverage is allowed under the Design Act for “features of shape, configuration, pattern or ornament applied to an article by any industrial process or means, being features which, in the finished article, appeal to and are judged by the eye”. This limits protection to three-dimensional designs. In practice, this means a label design can be claimed if the label is clearly shown as three-dimensional. Similarly, a paper towel design can be claimed if all views of the towel are shown, so that all dimensions of the article are clear.
Portions of an article may be claimed, provided that the portion can be made and sold separately. (Dashed lines can be used to disclaim the remainder.)
While “novelty” is a requirement, no substantive novelty examination is performed prior to registration. A statement of novelty pointing out the portion claimed as novel is required.
Multiple designs can be included in one application, as long as they fall into the same Locarno classification, or are members of a set, such as a knife, fork and spoon. This provides a significant cost advantage and registration of slight design variations can aid in preventing copying by infringers who make only small changes.
In the Philippines, an industrial design is defined as “any new or original creation relating to the ornamental features of shape configuration, form or combination thereof, of an article of manufacture, whether or not associated with lines, patterns or colors, which impact an aesthetic and pleasing appearance to the article.”
The subject of the industrial design must be an article of manufacture. Icons, patterns not applied to an object, etc. do not qualify for protection as industrial designs. Portions of an article can be covered if they can be made and sold separately. Shading, illustrating the contours of the article is required, except in the case of a colour claim where a cross-sectional view of the design maybe required in lieu of surface shading, and the colour coding based on the Registry colour chart is used.
A “characteristic feature” statement pointing out the novel aspects of the design is preferred, but not required.
Philippine design practice allows for the use of multiple embodiments. However, it is important that the articles should be of substantially similar dominant design features that are embodied in a single design concept. They must also relate to the same sub-class of the International classification or same set or composition of articles.
An individual design can be the subject of both a copyright and an industrial design application. This dual coverage offers advantages in speed and longevity of protection.
Following publication, third parties have two months to present evidence showing that the design is not new. At the end of this two month period a certificate of registration is sent to the applicant.
Industrial designs or models in Singapore are defined as “the features of shape, configuration, pattern or ornament applied to an article by any industrial process.”
For national registration, Singapore requires designs be novel, but no examination as to novelty is conducted at the time of application. A statement of novelty is required and should be less than 500 words. For multiple embodiment applications, each embodiment should have a separate statement.
When directly filing Singapore design applications, it is possible to obtain protection for a portion of an article provided the portion is made and sold separately.
In Thailand, protection can be obtained for “any configuration of a product or composition of lines or colours that gives a special appearance to a product and can be used as a pattern for a manufactured or handcrafted article.”
Both two-dimensional designs applied to an article and three-dimensional designs are accepted. A perspective view as well as front, back, side, top and bottom views are required in order for the filing to be considered complete. Photographs can also be used. The written disclosure in Thai is limited to 100 words.
A novelty search is done by an examiner in the Patent Office after publication. Following publication, a third party has 90 days to oppose the design. Should the design be rejected based on novelty, an appeal can be lodged within 60 days.
It is possible to defer publication of an application by not responding to the notice that the publication fee is due. At the end of the 60-day payment period, a second notice to pay the fee is sent. Paying the fee at the end of the second 60-day period results in publication being delayed four months.
It is also possible to obtain design protection under patent/registration and copyright laws.
Industrial design patents “protect the outer appearance of a product represented by lines, three-dimensional forms or colors or a combination of these … and which may serve as a pattern for the manufacture of an industrial or handicraft product.”
All design filings must include views of all sides of the article and a perspective view.
Following the formalities examination the application is published. A substantive examination as to the novelty, creativeness and industrial applicability of the design are carried out by the National Office of Intellectual Property of Vietnam following the formalities examination is complete.
Third parties have multiple opportunities to provide input to the NOIP regarding the registrability of a design. Following publication, a third party may file an opinion and references related to the design. Following registration, an opposition can be filed within two months. Third parties can also request nullification of an industrial design, based on the grounds of lack of novelty, deliberate misinformation presented to the patent office regarding the creator of the design or that the registration was granted to an entity that is not entitled to it.
Protection of one’s industrial designs is a critical part of an overall IP protection program. Because design laws and practice varies between countries, it is important that everyone considering industrial design protection be aware of the different requirements and work with their agents in each country to insure the most efficient and cost effective route to complete protection is utilized.