Looking Good
Intellectual Property
for Business Series
Number: 2
LOOKING GOOD
An Introduction to Industrial
Designs for Small and
Medium-sized Enterprises
WORLD
INTELLECTUAL
PROPERTY
ORGANIZATION
Publications in the “Intellectual Property for Business” series:
1. Making a Mark: An Introduction to Trademarks for Small and Medium-sized
Enterprises. WIPO publication No. 900.
2. Looking Good: An introduction to Industrial Designs for Small and Medium-sized
Enterprises. WIPO publication No. 498.
3. Inventing the Future: An introduction to Patents for Small and Medium-sized
Enterprises. WIPO publication No. 917.
4. Creative Expression: An introduction to Copyright for Small and Medium-sized
Enterprises. WIPO publication No. 918 (forthcoming).
All publications available from the WIPO e-bookshop at: www.wipo.int/ebookshop
Disclaimer: The information contained in this guide is not meant as a substitute
for professional legal advice. Its purpose is to provide basic information on the subject
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matter.
www
WIPO Copyright (2006)
No part of this publication may be reproduced or transmitted in any form
or by any means, electronically or mechanically, except as permitted by law,
without written permission from the owner of the copyright.
P r e fa c e
This is the second in a series of guides on “Intellectual Property for
Business”. It focuses on industrial designs, a key factor in determining
the success of products in the market.
In intellectual property law, an industrial design relates to the
aesthetic or outward appearance of a product. It is what makes a
product attractive or appealing to customers and visual appeal is one
of the key considerations that influence the decision of consumers to
prefer one product over another. Industrial designs help companies
to differentiate their products from those of competitors and enhance
the brand image of their products. This is why ensuring the proper
protection of industrial designs is so important.
The guide is meant as an introduction to the protection of industrial
designs for small and medium-sized enterprises (SMEs) and includes
questions and answers, examples and illustrations of protected
industrial designs.
Nationally-customized versions of the guide maybe developed in
cooperation with national institutions; and local partners which are
encouraged to contact WIPO to obtain a copy of the guidelines
for customization.
Kamil Idris,
Director General, WIPO
1
Ta b l e o f C o n t e n t s
Page
1. Industrial Designs
3
2. Protecting Industrial Designs
6
3. Protecting Designs Abroad
16
4. Enforcing Industrial Designs
18
5. Other Legal Instruments
for Protecting Industrial Designs
19
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2
1. Industrial Designs
from textile designs to sports equipment.
Industrial design is also important in relation to
What is an industrial design?
packaging, containers and “get–up” of products.
In everyday language, an industrial design
generally refers to a product’s overall form and
As a general rule, an industrial design consists of:
function. An armchair is said to have a “good
three-dimensional features, such as the
industrial design” when it is comfortable to sit
shape of a product,
in and we like the way it looks. For businesses,
two-dimensional features, such as
designing a product generally implies
ornamentation, patterns, lines or color
developing the product’s functional and
of a product; or
aesthetic features taking into consideration
a combination of one or more such features.
issues such as the product’s marketability, the
costs of manufacturing or the ease of transport,
Example of a three-dimensional design
storage, repair and disposal.
From an intellectual property law perspective,
however, an industrial design refers only
to the ornamental or aesthetic aspects
of a product. In other words, it refers only
to the appearance of an armchair. Although
the design of a product may have technical
Courtesy: Villeroy + Boch A.G.
or functional features, industrial design, as
a category of intellectual property law, refers
Example of a two-dimensional design:
only to the aesthetic nature of a finished
product, and is distinct from any technical
or functional aspects.
Industrial design is relevant to a wide variety
of products of industry, fashion and handicrafts
from technical and medical instruments to
watches, jewelry, and other luxury items; from
household products, toys, furniture and electrical
appliances to cars and architectural structures;
3
Creative Designs in Business
Why protect industrial designs?
Enterprises often devote a significant amount
An industrial design adds value to a product.
of time and resources to enhancing the design
It makes a product attractive and appealing
appeal of their products. New and original
to customers, and may even be its unique
designs are often created to:
selling point. So protecting valuable designs
should be a crucial part of the business strategy
1. Customize products to appeal to
of any designer or manufacturer.
specific market segments:
small modifications to the design of some
By protecting an industrial design through
products (e.g. a watch) may make them
its registration at the national or regional
suitable for different age groups, cultures or
intellectual property office, the owner obtains
social groups. While the main function of a
the exclusive right to prevent its
watch remains the same, children and adults
unauthorized copying or imitation by
generally have very different tastes in design.
others. This makes business sense as it
improves the competitiveness of a business
2. Create a new niche market: in a
and often brings in additional revenue in
competitive marketplace, many companies
one or more of the following ways:
seek to create a niche market by introducing
creative designs for their new products to
differentiate them from those of their
competitors. This could be the case for
ordinary items such as locks, shoes, cups
and saucers to potentially expensive items
such as jewelry, computers or cars.
3. Strengthen brands: creative designs
Courtesy: Victorinox Ltd
are often also combined with distinctive
trademarks to enhance the distinctiveness
By registering a design you are able to
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of a company’s brand(s). Many companies
prevent it from being copied and imitated
have successfully created or redefined their
by competitors, and thereby strengthen
brand image through a strong focus on
your competitive position.
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product design.
4
Registering a valuable design contributes
Shedding Some Light on Designs
to obtaining a fair return on investment
While the functional elements of a lamp do
made in creating and marketing the relevant
not generally differ significantly from product
product, and thereby improves your profits.
to product, its appearance is likely to be one
of the major determinants of success in the
Industrial designs are business assets
marketplace. This is why industrial design
that can increase the commercial value
registers in many countries have a long list
of a company and its products. The more
of designs for household products such
successful a design, the higher is its value
as lamps.
to the company.
A protected design may also be licensed
(or sold) to others for a fee. By licensing it,
you may be able to enter markets that you
are otherwise unable to serve.
Registration of industrial designs
(image à détourer)
encourages fair competition and honest
trade practices, which, in turn, promote
the production of a diverse range of
aesthetically attractive products.
Reasons for Protecting Designs
in the European Union
To prevent being copied
70.0%
Company policy
23.4%
Courtesy: Nemo S.p.A.
To get ahead of the competition
20.3%
Matter of company prestige
10.1%
To prevent people thinking “I copy”
6.5%
Others
5.8%
Source: OHIM, Prospective Study about the Design
Registration Demand at a European Union Level (2002).
5
2. Protecting
unregistered design provides a good alternative.
Industrial Designs
However, once the product is manufactured,
designers have up to 12 months in which
How do you obtain protection
to register it. The protection provided to an
for industrial designs?
unregistered design is limited, in that it
In most countries, an industrial design must
is more difficult to enforce than for a registered
be registered in order to be protected
design, and shorter, as it lasts for three years
under industrial design law.
as opposed to the 25 years provided to
registered designs in the European Union.
To register an industrial design you must file
an application at the national intellectual
While this guide focuses mainly on registered
property (IP) office of the country where you
industrial designs, it is important to point out
are seeking protection (a list of web sites of IP
that, in some countries, there may be alternative
offices is provided in Annex I). For protection
ways of protecting industrial designs:
abroad, see Section 3.
Depending on the particular national law
A note needs to be made for some countries
and the kind of design, one such alternative
or common economic areas such as the
for protecting designs is copyright law.
European Union, where recent legislation has
Copyright generally provides exclusive
made it possible to obtain limited industrial
rights for literary and artistic works.
design protection for unregistered designs
As some designs may, in some countries,
for three years from the date on which the design
be considered works of art or applied art,
has been published in the European Union.
copyright protection may apply and may
represent an attractive option for SMEs.
The unregistered design provides companies
with the opportunity to test market their
In addition, in some countries, if an industrial
products before going through the effort and
design functions as a trademark in the
expense of registering all designs, many of
marketplace, then it may be protected as
which may not succeed in the marketplace.
a three-dimensional mark. This may be
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In addition, some designs may remain on the
the case when the shape of the product or
market for a very short time, especially in the
its packaging are considered to be distinctive.
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fashion industry. For such products, the
6
Laws on unfair competition may also
or to which it is applied. The law and practice of
protect a company’s industrial design in
a relevant country or region determine the actual
some countries from imitation by competitors.
scope of protection of the registered design.
For more details on protecting your design under
copyright, trademark or unfair competition laws,
What can be registered
see Section 5.
as an industrial design?
As a general rule, to be able to be registrered, a
What rights are provided by industrial
design must meet one or more of the following
design protection?
basic requirements, depending on the law of
When an industrial design is protected by
the country:
registration, the owner is granted the right
to prevent unauthorized copying or
The design must be “new”. A design is
imitation by third parties. This includes the
considered to be new if no identical design
right to exclude all others from making,
has been made available to the public
offering, importing, exporting or selling
before the date of filing, or the application
any product in which the design is incorporated
for registration.
Exclusive Rights
So, while you cannot stop competitors from
making competitive products you may prevent
Let us assume that your company has designed
them from making products that look just like
an umbrella with an innovative design, registered
yours and having a free ride on your creativity.
it at the national IP office, and has therefore
For details on how to enforce your rights you
obtained exclusive rights over umbrellas bearing
are advised to consult an IP lawyer.
that design. What this means is that if you
discovered that a competitor is making, selling
or importing umbrellas bearing the same or
substantially the same design you will be able to
prevent him from using your design and, possibly,
obtain compensation for damages which your
business has suffered from the unauthorized use
of that design.
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The design must be “original”. A design
Designs that do not meet the requirements
is considered original if it has been
of novelty, originality and/or individual
independently created by the designer and is
character (as explained above).
not a copy or an imitation of existing designs.
Designs that are considered to be dictated
The design must have “individual
exclusively by the technical function
character”. This requirement is met if
of a product; such technical or functional
the overall impression produced by a design
design features may be protected,
on an informed user differs from the overall
depending on the facts of each case,
impression produced on such a user by any
by other IP rights (e.g. patents, utility
earlier design which has been made
models or trade secrets).
available to the public.
Designs incorporating protected
Traditionally, protectable designs relate to
official symbols or emblems
manufactured products such as the shape
(such as the national flag).
of a shoe, the design of an earring or the
ornamentation on a teapot. In the digital
Designs which are considered to be
world, however, protection is gradually extending
contrary to public order or morality.
in some countries to a number of other products
and types of design. These include electronic
In addition, it is important to note that some
desktop icons generated by computer codes,
countries exclude handicrafts from design
typefaces, the graphic display on computer
protection, as industrial design law in these
monitors and mobile telephones, etc.
countries requires that the product to which
an industrial design is applied is “an article
of manufacture” or that it can be replicated
What cannot be protected
by “industrial means”.
by industrial design rights?
Designs that are generally barred from
Depending on the national legislation there may
registration in many countries include
be further restrictions on what cannot be
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the following:
registered as a design. It is advisable to consult
an IP agent or the relevant national IP office.
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How do you register a design?
You may choose to employ an IP agent
To register a design in your own country you
to assist you in filing the application and
must generally take the following steps:
completing the registration process.
In that event, you will also have to file a
Fill in the application form provided by
document certifying the transfer of
your national IP office (see Annex I with a
power to your representative.
list of web sites of IP offices where you can
register your designs) including your name,
Some offices register the design only after
contact details and drawings, and/or
undertaking a formal examination to ensure
photographs of the design(s) in question
that administrative formalities have been
(standard formats are usually specified).
complied with. Others may conduct a
substantive examination checking the existing
In some countries, you may also be required
designs on the register for novelty and/or
to file, or have the option of filing, a
originality. More and more offices are
written description or statement of
accepting registration without checking for
novelty of the industrial design(s). The
novelty and/or originality.
description generally needs to be of the
design and not of the product to which it
Once a design is registered, it is entered into the
has been applied. It should be accurate
design register, published in the official design
and adequate in differentiating it from any
gazette and a design registration certificate is
similar earlier designs. It should cover all
issued. In some countries/regions it may be
the distinctive aesthetic features of the
possible to request deferment of publication in
design and should describe which feature(s)
which case the design will be kept secret for a
is/are the most important. In some
certain period specified by the relevant law.
countries, the examiner may ask for a
Preventing publication for a period of time may be
sample of the design to understand it
preferable for strategic business reasons.
better or to feel its texture or material.
Details on how to protect a design abroad are
You will also be required to pay the
provided in Section 3.
appropriate filing fee.
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How long does it take to register a design?
this is that the central requirement for design
Depending on each national IP office, the
protection is generally, that the design must
process of registration of an industrial design
be “new”. If you show your design to others
generally takes six to 12 months or longer
it is advisable to have confidentiality clauses
depending on a number of issues such as
in written agreements, clarifying that the design
whether any objections are raised by the
is confidential.
design examiner or if there is a provision
for opposition prior to the registration of
A design that has already been disclosed to the
the industrial design under consideration.
public by, for example, advertising it in your
company’s catalogue or brochure may no longer
be considered “new”. It becomes part of the
How important is it to keep the design
public domain and cannot be protected, unless
confidential before registration?
the applicable law provides for a “grace period”
If you wish to protect your industrial design
or unless the priority of an earlier application can
under a registration system, keeping the design
be claimed (see also “How do you protect your
confidential is absolutely crucial. The reason for
industrial designs abroad?” on page 16).
Example: BABY AND CHILDREN
The success of this product has been considerable.
Taking into consideration the welfare and comfort
The hammock is today one of BABY AND
of babies in the bath, the small French enterprise
CHILDREN’s leading products and the company,
BABY AND CHILDREN designed and produced a
armed with the legal monopoly provided by
baby hammock for the bathroom. Its simple and
industrial design protection, continues to market
original design managed to appeal to mothers
its product around the world.
and babies worldwide. In order to ensure
protection for its new product, BABY AND
CHILDREN deposited an international application
for industrial design registration in March 2000.
Once the registration was completed,
BABY AND CHILDREN managed to commercialize
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its product in over ten countries in three different
continents, either directly or by granting licenses
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based on its registered industrial design.
Courtesy: BABY AND CHILDREN
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What is the “grace period”?
up to 25 years under the registered Community
In some countries, the legislation allows for
Design of the European Union). In many
a grace period for registration of generally six
countries, rights holders are required to renew
months or a year from the moment a design was
their design protection after five years.
made public, disclosed or published.
This is the case when articles bearing the design
How much does it cost to protect
are sold, displayed at a trade show, exhibition or
an industrial design?
fair, or are published in a catalogue, brochure or
The actual costs will vary significantly from
advertisement prior to filing an application.
country to country. However, it is important
During that period, you may market your design
to bear in mind the different types of costs
without it losing its “novelty” and you may still
that may be involved in the process:
apply for registration.
1. There will be registration fees to be paid
However, as this is not the case in all countries,
to the national or regional IP office. The
and, in any event, is limited in time, it is often
fees will generally vary depending on the
advisable to keep the design confidential until
number of designs to be registered and the
you apply for design protection. In addition,
number of countries in which registration
you will have no exclusive design rights during
is being sought. By way of example, an
the grace period (although your design may be
application for a single Community Design
automatically protected under copyright or
in the countries of the European Union
unfair competition law, depending on the
costs 350 Euros. This amount would rise to
provisions of the relevant national legislation;
1,925 Euros if the application contained 10
see more on copyright in Section 5).
designs. Details on the exact fees should
be obtained from your IP agent or from the
IP offices concerned.
How long does industrial design
protection last?
2. There will also be costs associated
The term of protection for a registered industrial
with the hiring of the services of an
design varies from country to country, but is
IP agent to assist you in the registration
usually at least 10 years (although it is often
process, if you choose to rely on expert
longer; for example, 14 years for design
advice to file your application.
patents in the United States of America, and
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3. Most countries require the payment of
new product combines functional improvements
renewal fees, usually on a five-year basis,
with innovative aesthetic features. Let us say
to maintain their exclusive rights over an
you have designed a new mobile phone. While
industrial design.
the mobile phone may be the result of a series
of improvements to the electronic components
4. There may be costs associated with the
and could be protected by patent(s), the original
translation of the industrial design if it
design of your mobile phone could be registered
is to be protected abroad.
as an industrial design. Can you apply for both?
The answer is yes.
What should you do if your design
combines functional improvements
with aesthetic features?
To obtain exclusivity over the functional
[BH Nokia 5100, ou Nokia 6100
improvements of a product, it is generally
que nous pouvons téléchargé direct.
advisable to apply for patent or utility model
Je vais te donner l’URLadd
protection or, where the function is not
obvious from the product, to keep it as a trade
secret. However, it is often the case that a
© Nokia
Design Protection and Business Strategy
whether to undertake design development
in-house or to commission an outside agency;
Decisions on how, when and where to protect
a company’s industrial designs may have an
the timing of the initial use of a new design
important impact on other areas of design
in advertising, marketing or public display
management. It is crucial therefore to integrate
in an exhibition;
issues of design protection into the broader
business strategy of an enterprise. For
which export markets to target;
example, the type of protection, the costs,
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the effectiveness of protection and issues
if, when and how to license or assign a design
of ownership of designs, may be important
to be commercially exploited by other
considerations when deciding:
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companies in return for economic remuneration.
12
Many designers protect different aspects
entity (e.g. a company). In either case, the
of their products with different intellectual
application may be made directly or through an
property rights. It is important, however,
agent. If you are a foreign applicant you may
to keep in mind the basic difference between
be required to be represented by an agent duly
patents/utility models and industrial designs.
authorized by the IP office of that country.
Patents and utility models are for
inventions that bring about functional
improvements to a product and industrial
Who owns the rights over
design protection is for the appearance
an industrial design?
of the product.
The creator of a design, i.e. the designer, is
usually the first owner of the design, unless
there are special circumstances. For example, in
Who may apply for industrial
most countries, if an employee has developed
design protection?
a design under the terms of an employment
In general, the person who created the design
contract, that is, during his working hours
or, if working under contract, his employer, can
within the enterprise and as part of his regular
apply for registration. The applicant can be
duties within the enterprise, the design (and
either an individual (e.g. a designer) or a legal
the related rights) will belong to the employer
Example: DURACELL
The innovative functional features of the
Until the 1980s Duracell was virtually a one-
product are protected by patents, while the
product company manufacturing alkaline
design has been protected in all the major
batteries. In 1981, Duracell employed consultant
countries where Duracell currently trades.
designers to produce a pocket flashlight, which
was launched shortly after, in 1982. Two years
later, the design of the flashlight won the United
Kingdom Design Council Award. Over the years,
(Image d’une lampe de poche Duracell)
Duracell has introduced several variations of the
(Image avec leur marque)
pocket flashlight with different designs for
different target markets. Flashlights for young
consumers were developed in fashionable colors.
Duracell ®
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or may require to be transferred by a formal
copyright protection over the drawings of the
written assignment.
original design and the issue should also be
covered by the contract.
If the design was developed by an external
designer under contract, the rights will
Can you apply for the registration
generally belong to the company that
of many different designs through
commissioned the design. In such cases, it
a single application?
is considered that the design was produced
The answer varies significantly from country to
for the use of the person who commissioned
country. In many countries, you may apply for
the design, who is therefore the owner.
the registration of many designs (10, 20 or even
Misunderstandings at a later date can be
50 designs) through a single application as long
avoided by clarifying the issue of rights
as they all relate to the same product or “class”
ownership in the original contract with the
of products (see explanation of “classes”
designer. You should also bear in mind that the
on page 15).
designer of the product may have automatic
Example: TRAX
This gives OMK Design Ltd exclusivity over the
TRAX is a public seating system designed by
commercialization of the product with the
Rodney Kinsman and sold and marketed by OMK
protected design in those countries. On
Design Ltd. TRAX public seating was originally
occasions, OMK Design Ltd has licensed foreign
designed to meet the requirements of British
companies to produce the TRAX public seating
Rail, which was seeking public seating of good
system on payment of royalties.
appearance, comfortable, weather-resistant and
requiring little maintenance. Over the years,
TRAX has become a successful product, partly
due to its practical design, and has been
installed in over 60 airports worldwide.
The TRAX design is protected as a registered
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industrial design in the United Kingdom,
Australia, the Benelux Countries, Germany, Italy,
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Japan and the United States of America.
Courtesy: TRAX®
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This means that if you have designed a set of
character which are normally sold together,
chairs, tables and dressers and would like to
or intended to be used together, and which
protect them, many countries would allow you
share some common design features.
to file a single application covering all of them,
Examples include, cutlery (forks, spoons,
paying only one application fee, as they all
knives) and household appliances (a
belong to the same class of products. If,
hairdryer and its nozzles and brushes).
however, you also intended to protect an
accompanying lamp you are likely to be
As you can see, there is a wide variation
required to file a separate application. Lamps,
in what is possible in a single application;
in fact, do not belong to the same class of
the exact details of the requirements and
products. Generally, although fees are charged
possibilities for seeking protection in a cost-
for each additional design, they are significantly
effective manner should be established either
less than the cost of filing a separate
with an IP agent or with the relevant IP office.
application for each design.
In some countries, however, you may have
The International Classification System
to file a separate application for each design.
Industrial designs are generally classified
Many of these countries, while limiting an
or grouped into classes for ease of retrieval.
application to a single design, permit several
You may be asked to refer to the class of products
variants of that design; others allow for an
for which you intend to use the design in question
exception to the “single design” rule when all
in your application form. Many countries use
the designs relate to a “set of articles”.
the classification of the Locarno Agreement
Establishing an International Classification
Variants would include, for example, two
for Industrial Designs (see List of Classes in
earrings, which differ in that one is a clip-
Annex II). See also:
on and the other is for pierced ears. To be
www.wipo.int/classifications/en/locarno/about/
considered variants, the designs must be
applied to the same article and must not
differ substantially from one another.
A “set”, on the other hand, is defined as a
number of articles of the same general
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Can you license your industrial designs?
3. Protecting
Designs Abroad
Industrial designs are licensed when the owner
of the design (licensor) grants permission to
another person (the licensee) to use the design
Why protect designs abroad?
for whatever mutually agreed purposes. In
If your company intends to export products
such cases, a licensing contract is generally
bearing an original design, or intends to license
signed between the two parties specifying the
the manufacture, sale or export of such products
terms and scope of the agreement.
to other firms in foreign countries, it should
consider protecting its designs in such countries
Licensing contracts often include limitations as
in order to enjoy the same benefits of protection
to the countries where the licensee may use the
abroad as it enjoys in the domestic market.
design, the time for which the license is granted
and the type of products for which it can be used.
In order to license the use of the design in foreign
How do you protect your industrial
countries you would need to have previously
designs abroad?
obtained, or at least applied for, industrial design
Industrial design protection is territorial. This
protection in the countries concerned.
means that industrial design protection is generally
limited to the country or region where you have
Authorizing others to use your industrial designs
registered your design. Hence, if you wish to have
through a licensing contract will enable your
your industrial design protected in export markets
business to receive an additional source
you would have to make sure that protection is
of revenue and is a common means of
applied for in those specific countries.
exploiting a company’s exclusivity over its
registered designs.
It is important to bear in mind that you usually
have six months from the date on which you
Agreements to license industrial designs are
applied for protection in the first country to claim
often included in broader licensing agreements,
the right of priority when you apply for design
which cover all aspects (i.e. not just the visual
protection in other countries. Once this period
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elements) of a product.
has lapsed, you will be unable to apply for design
protection in foreign countries, as your design will
no longer be considered new.
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There are three ways of protecting your
the Organisation Africaine de la Propriété
industrial designs abroad.
Intellectuelle (OAPI) for protection in
French-speaking African countries.
1. The National Route: Companies may
seek protection by applying separately to
See Annex I for website addresses of regional
the national IP offices of each country in
IP offices.
which they intend to obtain protection.
The process can be rather cumbersome and
3. The International Route: Companies that
expensive as translation into the national
wish to register their designs internationally in
languages is generally required as well as
several countries may also use the procedures
payment of administrative (and sometimes
offered by the Hague Agreement
legal) fees.
Concerning the International Deposit
of Industrial Designs, a WIPO-administered
2. The Regional Route: If you are interested
treaty. An applicant from a Member country
in a group of countries that are members
to the Hague Agreement can file a single
of regional agreements which enable the
international application with WIPO;
registration of designs in more than one
the design will then be protected in as
country, then you can consider filing a single
many Member countries of the treaty as the
application at the regional IP office
applicant wishes. The agreement provides
concerned. Regional IP offices include:
applicants with a simpler and cheaper
mechanism for applying for industrial design
the African Regional Industrial Property Office
registration in various countries. For full
(ARIPO) for industrial design protection in
information about the Hague Agreement
English-speaking African countries;
including a list of Member States and the
application form, visit the WIPO website at:
the Benelux Designs Office (BDO) for
www.wipo.int/hague/.
protection in Belgium, the Netherlands
and Luxembourg;
The costs of an industrial design registration
under the Hague Agreement vary depending on
the Office for Harmonization in the Internal
the number of designs to be protected and the
Market (OHIM) for Community designs in
number of countries where protection is
the countries of the European Union;
17
sought. For example, the cost of protection
main responsibility for identifying and taking
for five designs in 11 countries using the
action against imitations or infringement of an
international route offered by The Hague
industrial design lies with its owner. In other
system is approximately 900 Swiss francs.
words, you are responsible for monitoring
the use of your design in the marketplace,
identifying any imitators or counterfeiters
4. Enforcing Your
and deciding whether, how and when to
Industrial Designs
take action against them.
How can you enforce your rights when
An IP lawyer would normally be the competent
your design is being imitated,
person to give you information about the
copied or infringed?
possibilities in your country to take legal action
Enforcing any IP right may be a complex
against imitators, infringers and counterfeiters
issue for which it is usually advisable to seek
and provide you with advice on how to settle
professional assistance from a competent IP
any dispute.
lawyer. It is important to bear in mind that the
International Design Protection
sums of money and expertise in the development
of winning designs and make sure they have
In 2001, the ten largest users of The Hague
exclusive rights to the exploitation of their designs
System for the international deposit of industrial
through registration in many countries.
designs in terms of the number of applications
were the Swatch Group, Interior, Sony Overseas,
Hermès, Daimler Chrysler, Nokia, Villeroy + Boch
A.G., Moulinex, Philips Electronics and Salomon.
In that year, the Swatch Group, the largest user
of the system, deposited 103 applications for
design registration using The Hague System.
The distinctive “look” of its watches is considered
.wipo.int/sme/
a crucial feature that influences the choice of its
customers in favor of its products. In view of this,
www
companies like the Swatch Group invest large
Courtesy: Swatch AG
18
5. Other Legal
Whenever you believe there is infringement,
Instruments
you may choose, as a first step, to send a
for Protecting
“cease or desist letter” informing the infringer
Industrial Designs
of a possible conflict between his design and
your exclusive rights. The assistance of a lawyer
in drafting such a letter is recommended. If the
What are the differences between
infringement persists, it may be necessary to
copyright protection and industrial
take legal action against the infringer.
design protection for designs?
In some countries, the applicable law recognizes
If you know the location of the infringing
copyright protection for certain designs, for
activity, it may be possible to take surprise
example, in the design of textile and fabrics.
action by obtaining a search and seize order
(usually from a competent court or the police)
to conduct a raid, without prior notice to the
allegedly offending company/individual.
In order to prevent the importation of
Image du catalogue ASEAN –Sheyda l’enverra
infringing goods, measures at the
international border are available to the design
owner in many countries through the national
customs authorities.
In many countries you may obtain cumulative
As a general rule, if infringement is identified,
protection, (i.e., copyright protection and industrial
it is highly advisable to seek professional
design protection) which can exist concurrently for
legal advice.
the same design, while in a few countries, the two
forms of protection are mutually exclusive.
The first step before taking any decision on how
best to protect your design is to understand the
differences between these two forms of protection.
Some of the main differences are outlined below:
19
Registration
Copyright endures in most countries for the
Under industrial design law the industrial
life of the author and 50 or 70 years
design generally needs to be registered
after his death.
by the applicant before publication or
public use anywhere, or at least in the
Scope of protection
country where protection is claimed.
The right conferred by registration of an
The registration certificate, provided by
industrial design is an absolute right in
protection under industrial design law, may
the sense that there is infringement whether
prove useful in cases of infringement, as it
or not there has been deliberate copying.
provides a more solid basis from which you
may enforce your exclusive rights.
To enforce rights under copyright law,
the copyright owner must prove that the
Copyright in works considered to be
allegedly infringing work is a direct or
original subsists without formalities. While
indirect reproduction of the work protected
registration is not necessary for
by copyright.
protection, copyright depositaries exist in
some countries where you may deposit your
Types of products
design and obtain a certificate.
In most countries, not all designs can
be protected by copyright but primarily
Duration
those that may be considered as works of
Industrial design protection generally lasts
art. While the distinction may not always
for a period that varies between 10 and
be clear, some designs, such as the shape
25 years depending on the country where
of manufactured products, are unlikely to
protection is sought. It must also be borne
be protectable under copyright law, while
in mind that the process of registration
others, such as textile designs, are often
of industrial designs may take some time,
covered by both forms of protection.
and may not always be adequate for products
that are linked to passing trends
Costs
.wipo.int/sme/
(e.g. fashion products).
Registering your design in the countries you
are interested in means that you will have
to pay the applicable fees. In addition,
www
20
it may be useful or necessary to use the
Example: In a recent survey of fabric designers
services of an IP agent to assist you in
in the United Kingdom, 80% of respondents said
drafting the application, which will incur
they always kept a record of their original design
additional costs.
documents and were aware of their importance
for proving copyright ownership.
Given that no formal registration of works
protected by copyright is required by most
national copyright laws, there are generally
When can trademark law protect a design?
no direct costs relating to copyright
A trademark is a distinctive sign (generally a
protection. However, there may be costs
word, a logo or a combination of the two) used
related to (a) the deposit of the work at the
to differentiate the products of one company
copyright depositary, in countries where it
from those of others. There are circumstances
exists, and (b) demonstrating proof of
in which the form, design or packaging of
ownership in case of disputes.
a given product may be considered to be a
distinctive feature of the product in question
In summary, while the protection granted by
and may be protectable as a three-dimensional
registered industrial designs is stronger in that
trademark. The bottle of Coca-Cola or the
it covers even unintentional infringement and
triangular shape of the Toblerone chocolate
provides a registration certificate which may
bar are some such examples.
be an important proof in case of infringement,
it involves more effort (financial and administrative)
because it requires registration, and is shorter
in duration.
In any case, and particularly if the design
is not registered, it is generally advisable to
keep good records of every step in the
Toblerone® which is a trademark registered by
development of the design. Signing and
the Kraft Foods Group ©1986
dating each sketch, and properly archiving
them, may help in case of infringement.
21
It is advisable to consult an IP agent to
determine whether a particular design may
be considered a three-dimensional trademark.
Trademark protection has the advantage of
being renewable indefinitely, while industrial
design protection is usually protectable for a
limited period of time (generally 10 or 25 years).
There may also be a difference in the costs
of registering trademarks as compared with
industrial design protection. Depending on
the legal system, the two types of protection
may co-exist.
Do laws on unfair competition protect
your design?
In many countries, industrial designs are often
protected under laws on unfair competition.
Thus, a design may be protected against acts
of unfair competition including, in particular,
slavish copying and acts that may lead to
confusion, acts of imitation or use of a third
party’s reputation. However, protection under
unfair competition is generally significantly weaker
and infringement is more difficult to prove.
.wipo.int/sme/
www
22
A n n e x I – U s e f u l w e b s i t e s
For more information on:
•
other intellectual property issues from a business perspective:
www.wipo.int/sme/
•
industrial designs generally:
www.wipo.int/about-ip/en/
•
practical aspects relating to the registration of industrial designs, see list of websites of national
and regional intellectual property offices available in Annex I or:
www.wipo.int/directory/en/urls.jsp
•
the Hague Agreement for the International Deposit of Industrial Designs:
www.wipo.int/hague/en/
•
the Locarno Agreement Establishing an International Classification for Industrial Designs:
www.wipo.int/classifications
(under Locarno Agreement)
•
arbitration and mediation:
http://arbiter.wipo.int/
23
A N N E X I I – I n t e r n e t A d d r e s s e s
National and Regional Intellectual Property Offices
African Intellectual Property Organization
www.oapi.wipo.net
Algeria
www.inapi.org
Albania
www.alpto.gov.al
Andorra
www.ompa.ad
Argentina
www.inpi.gov.ar
Armenia
www.armpatent.org
Australia
www.ipaustralia.gov.au
Austria
www.patent.bmvit.gv.at
Bahrain
www.gulf-patent-office.org.sa/bahrainframe.htm
Barbados
www.caipo.org
Belarus
www.belgospatent.org/english/about/history.html
Belgium
www.mineco.fgov.be
Belize
www.belipo.bz
Benelux
www.boip.int
Benin
www.oapi.wipo.net
Bolivia
www.senapi.gov.bo
Botswana
www.aripo.org
Brazil
www.inpi.gov.br
Bulgaria
www.bpo.bg
Burkina Faso
www.oapi.wipo.net
Burundi
www.oapi.wipo.net
Cambodia
www.moc.gov.kh
Cameroon
www.oapi.wipo.net
Canada
www.opic.gc.ca
Central African Republic
www.oapi.wipo.net
Chad
www.oapi.wipo.net
Chile
www.dpi.cl
China
www.sipo.gov.cn
China (Hong Kong -SAR)
www.ipd.gov.hk
China (Macao)
www.economia.gov.mo
.wipo.int/sme/
China (Marks)
www.saic.gov.cn
Colombia
www.sic.gov.co
Congo
www.oapi.wipo.net
www
Costa Rica
www.registronacional.go.cr
24
Côte d’Ivoire
www.oapi.wipo.net
Croatia
www.dziv.hr
Cuba
www.ocpi.cu
Cyprus
www.mcit.gov.cy/mcit/drcor/drcor.nsf
Czech Republic
www.upv.cz
Democratic Republic of the Congo
www.oapi.wipo.net
Denmark
www.dkpto.dk
Dominican Republic
www.seic.gov.do/onapi
Egypt
www.egypo.gov.eg
El Salvador
www.cnr.gobs.sv
Estonia
www.epa.ee
Eurasian Patent Office
www.eapo.org
European Union (Office for Harmonization
in the Internal Market – OHIM)
www.oami.eu.int
Finland
www.prh.fi
France
www.inpi.fr
Gabon
www.oapi.wipo.net
Gambia
www.aripo.org
Georgia
www.sakpatenti.org.ge
Germany
www.dpma.de
Ghana
www.aripo.org
Greece
www.obi.gr
Honduras
www.sic.gob.hn/pintelec/indice.htm
Hungary
www.mszh.hu/english/index.html
Iceland
www.patent.is/focal/webguard.nsf/key2/indexeng.html
India
www.ipindia.nic.in
Indonesia
www.dgip.go.id
Ireland
www.patentsoffice.ie
Israel
www.justice.gov.il
Italy
www.uibm.gov.it
Jamaica
www.jipo.gov.jm
Japan
www.jpo.go.jp
Jordan
www.mit.gov.jo
Kazakhstan
www.kazpatent.org/english
Kenya
www.aripo.org
Kuwait
www.gulf-patent-office.org.sa
Lao People’s Democratic Republic
www.stea.la.wipo.net
Latvia
www.lrpv.lv
25
Lebanon
www.economy.gov.lb
Lesotho
www.aripo.org
Liechtenstein
www.european-patent-office.org
Lithuania
www.vpb.lt
Luxembourg
www.etat.lu/ec
Malawi
www.aripo.org
Malaysia
www.mipc.gov.my
Mali
www.oapi.wipo.net
Mexico
www.impi.gob.mx
Monaco
www.european-patent-office.org/patlib/country/monaco
Montenegro
www.yupat.sv.gov.yu
Morocco
www.ompic.org.ma
Mozambique
www.aripo.org
Namibia
www.aripo.org
Nepal
www.ip.np.wipo.net
Netherlands
www.octrooicentrum.nl
New Zealand
www.iponz.govt.nz
Niger
www.oapi.wipo.net
Norway
www.patentstyret.no
Oman
www.gulf-patent-office.org.sa
Panama
www.digerpi.gob.pa
Peru
www.indecopi.gob.pe
Philippines
www.ipophil.gov.ph
Poland
www.business.gov.pl/Intellectual,property,protection,90.html
Portugal
www.inpi.pt
Qatar
www.gulf-patent-office.org.sa
Republic of Korea
www.kipo.go.kr
Republic of Moldova
www.agepi.md
Romania
www.osim.ro
Russian Federation
www.rupto.ru
Saint Vincent and the Grenadines
196.1.161.62/govt/cipo/index.asp
Saudi Arabia
www.gulf-patent-office.org.sa
Senegal
www.oapi.wipo.net
.wipo.int/sme/
Serbia
www.yupat.sv.gov.yu
Sierra Leone
www.aripo.org
Singapore
www.ipos.gov.sg
www
Slovak Republic
www.indprop.gov.sk
26
Slovenia
www.uil-sipo.si/Default.htm
Somalia
www.aripo.org
South Africa
www.cipro.gov.za
Spain
www.oepm.es
Sudan
www.aripo.org
Swaziland
www.aripo.org
Sweden
www.prv.se
Switzerland
www.ige.ch
Syrian Arab Republic
www.himaya.net
Tajikistan
www.tipat.org
Thailand
www.ipthailand.org
The Former Yugoslav Republic
of Macedonia
www.ippo.gov.mk
Togo
www.oapi.wipo.net
Trinidad and Tobago
www.ipo.gov.tt/home.asp
Tunisia
www.inorpi.ind.tn
Turkey
www.turkpatent.gov.tr
Turkmenistan
www.eapo.org
Uganda
www.aripo.org
Ukraine
www.sdip.gov.ua
United Arab Emirates
www.gulf-patent-office.org.sa
United Kingdom
www.patent.gov.uk
United Republic of Tanzania
www.aripo.org
United States
www.uspto.gov
Uruguay
www.dnpi.gub.uy
Uzbekistan
www.patent.uz
Venezuela
www.sapi.gov.ve
Yemen
www.most.org.ye
Zambia
www.aripo.org
Zimbabwe
www.aripo.org
Note:
For up-to-date information visit website at the following urls: www.wipo.int/members/en/ and
www.wipo.int/directory/en/urls.jsp
27
Annex III – Locarno Agreement
International Classification for Industrial Designs of the Locarno Agreement
LIST OF CLASSES
1.
Foodstuffs
2.
Articles of clothing and haberdashery
3.
Travel goods, cases, parasols and personal belongings, not elsewhere specified
4.
Brushware
5.
Textile piece goods, artificial and natural sheet material
6.
Furnishing
7.
Household goods, not elsewhere specified
8.
Tools and Hardware
9.
Packages and containers for the transport or handling of goods
10. Clocks and watches and other measuring instruments, checking and signalling instruments
11. Articles of adornment
12. Means of transport or hoisting
13. Equipment for production, distribution or transformation of electricity
14. Recording, communication or information retrieval equipment
15. Machines, not elsewhere specified
16. Photographic, cinematographic and optical apparatus
17. Musical instruments
18. Printing and office machinery
19. Stationery and office equipment, artists’ and teaching materials
20. Sales and advertising equipment, signs
21. Games, toys, tents and sports goods
22. Arms, pyrotechnic articles, articles for hunting, fishing and pest killing
23. Fluid distribution equipment, sanitary, heating, ventilation and air-conditioning equipment, solid fuel
24. Medical and laboratory equipment
25. Building units and construction elements
26. Lighting apparatus
27. Tobacco and smokers’ supplies
28. Pharmaceutical and cosmetic products, toilet articles and apparatus
29. Devices and equipment against fire hazards, for accident prevention and for rescue
30. Articles for the care and handling of animals
.wipo.int/sme/
31. Machines and appliances for preparing food or drink not elsewhere specified
99
Miscellaneous
www
Note:
For up-to-date information, visit website at the following url:
28
www.wipo.int/hague/en/general/classification/html
Annex IV – Hague Agreement
Members of the Hague Agreement Concerning the International Deposit
of Industrial Designs (as of August 2006)
Belgium
Luxembourg
Belize
Mali
Benin
Monaco
Bulgaria
Mongolia
Côte d’Ivoire
Montenegro
Croatia
Morocco
Democratic People’s Republic of Korea
Namibia
Egypt
Netherlands
Estonia
Niger
France
Republic of Moldova
Gabon
Romania
Georgia
Senegal
Germany
Serbia
Greece
Singapore
Holy See
Slovenia
Hungary
Spain
Iceland
Suriname
Indonesia
Switzerland
Italy
The former Yugoslav Republic of Macedonia
Kyrgyzstan
Tunisia
Latvia
Turkey
Liechtenstein
Ukraine
Member States: 44
For more information contact the
World Intellectual Property Organization
Address:
34, chemin des Colombettes
P.O. Box 18
CH-1211 Geneva 20
Switzerland
Telephone:
+41 22 338 91 11
Fax:
+41 22 733 54 28
e-mail:
wipo.mail@wipo.int
or its New York Coordination Office at:
or its SMEs Division at:
Address:
Address:
2, United Nations Plaza
34, chemin des Colombettes
Suite 2525
P.O. Box 18
New York, N.Y. 10017
CH-1211 Geneva 20
United States of America
Switzerland
Telephone:
Fax:
+1 212 963 6813
+41 22 338 87 60
Fax:
e-mail:
+1 212 963 4801
sme@wipo.int
e-mail:
Web page:
wipo@un.org
www.wipo.int/sme
Visit the WIPO website at:
www.wipo.int
and order from the WIPO Electronic Bookshop at:
www.wipo.int/ebookshop
WIPO Publication No. 498(E)
ISBN 92-805-1293-3
Second edition
Barbara Hintermann Geneva
