Protection of Design Rights

Design protection provides protection to a functional items’ look and feel or in other words to the non – functional attributes of the item. An object with a substantially similar design to an existing items’ design cannot be made, copied or used without the permission of the person who holds the right to the existing design. Few notable examples include, shape of a bottle of a beverage like Coca – Cola, design of an automobile, mobile phones and iPod. Additionally, design of a product is a critical factor that attracts or influences the behaviour of a consumer and ultimately creates an impact on the products performance in the market.

Strategy is an essential part of any organization doing business of any sort. These strategies can be about the business model, marketing strategy to penetrate multiple markets or demographics etc. Similarly, IP (Intellectual property) strategy is essential however is often overlooked. A good IP strategy is of utmost importance to further grow or scale a business. A poor strategy or a lack of one can often lead to the end of a business. Especially in areas like South East Asia where there is an overabundance of competitors, cheap manufacturing costs and cheaper automation making it a hub for notorious endeavours.

As these rights are territorial in nature, it is a good strategy to at least seek protection on a products design in multiple countries where an organization plans to indulge in business activities. An industrial design may consist of three dimensional shapes or two dimensional structures like lines/patterns or colours.

How Industrial Design Rights Are Obtained

Depending on the applicable laws, independently created industrial designs must fulfil some or all of the following criteria: novelty/originality.

Novelty or originality of a design, to some extent, is subjective in nature and can vary from one jurisdiction to another. Generally, a design which is not disclosed to the public can be considered novel. Similarly, a design can be considered original if the design is different from the existing known designs or their combinations.

The duration of these rights also varies from country to country, for example:

In Indonesia, a design right is valid for ten years and the holder cannot seek renewal. Likewise, ten years is also the validity period for design rights in Canada. In Japan, the same right is provided for twenty years while in Singapore, the right in a design expires after fifteen years.

The procedure of applying for these rights differs from country to country as well, as does the cost. There can be different out of pocket expenses that can be incurred depending upon the country the application is being made to.

It is recommended to conduct searches for existing designs as it helps save time, money and avoid any potential infringement (knowingly or unknowingly) of others’ rights before applying for a design application.

Strategies

Since the design right is an intellectual property, there is always the option of licensing. If an organization isn’t operating in a certain region yet and finds out that there exist other company/companies in those areas with substantially similar or even infringed design, it is within the rights of the organization to seek an infringement suit or settle for a certain amount of royalty to be paid to them for making use of their designs.

Organizations must also keep the relationship of design rights and other intellectual properties in mind. Some countries allow for an overlap between the design right and copyright applications as well. This overlap however by no means states that it provides a cumulative protection and is solely dependent upon the countries laws. However, this does provide the benefit of having an added layer of protection over the design rights.

Author: Dhruv Verma, Business Analyst at Khurana & Khurana, Advocates and IP Attorneys. In case of any  queries please contact/write back to us at dhruv@iiprd.com.

References:

[1]https://www.wipo.int/wipo_magazine/en/2017/04/article_0006.html

[2] https://www.aseanbriefing.com/news/2018/06/14/design-rights-protection-south-east-asia.html

[3] https://www.wipo.int/designs/en/

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