Designs

PatNetPro offers the following services related to Designs:

• Drafting, filing and prosecuting of design applications in Israel, the United States, Europe and throughout the world
• Helping clients to develop design variants
• Status verification
• Infringement and validity opinions

In a legal sense, a design constitutes the ornamental or aesthetic aspect of an article.

An industrial design may consist of three dimensional features, such as the shape of an article, or two dimensional features, such as patterns, lines or color. Design registration aims to protect designs that have an industrial or commercial use. A registered design gives you, the owner, exclusive rights to commercially use, license or sell it.

Under the Hague Agreement Concerning the International Deposit of Industrial Designs, a WIPO-administered treaty, a procedure for an international registration exists. To qualify for registration, the national laws of most member states of WIPO require the design to be novel.[1] An applicant can file for a single international deposit with WIPO or with the national office in a country party to the treaty. The design will then be protected in as many member countries of the treaty as desired. Design rights started in the United Kingdom in 1787 with the Designing and Printing of Linen Act and have expanded from there.

Registering for an industrial design right is related to granting a patent.[2]

The Locarno Classification, established by the Locarno Agreement (1968), is an international classification used for the purposes of the registration of industrial designs.  The eleventh edition of the Classification entered into force on January 1, 2017.

Supporting resources

• Previous editions of LOC (9th and 10th ed.)
• Changes to LOC (9)
• Changes to LOC (10)
• E-Forum
• Frequently asked questions

An application is to be made under the Designs Act and the Designs Rules. The following documents are required for filing of an Application:

• Application in prescribed format
• Representation of the design in a suitable manner
• Brief Statement as to the novelty claimed

Design rights can protect the shape or appearance of an object.The right protects the design feature such as the shape or appearance rather than its function. Depending on your product and its target market, design rights may be available. Two types of right can apply: registered and unregistered rights.

An unregistered design right may arise automatically when a work is created and, for certain products (such as those with short shelf lives) may provide a sufficient form of design protection. The Unregistered Community Design right, for example, covers a design in the EU for up to three years, and includes protection for the ‘lines, contours, colors, shape and texture and/or materials of the product itself, and/or of its ornamentation’.

However, if you rely on an unregistered right, it’s important to keep good records of the design process e.g. the date the design was created and the date of first use in marketing because you will need to be able to prove the originality and ownership of your work if you need to bring a legal or other action based on an unregistered right. Furthermore, you can only prevent commercial use of a design if that design is intentionally copied, so it must be proven that the other party knows of the existence of the earlier design.

In contrast, a registered design right can provide a more legally certain tool for design protection and enforcement, and lasts for a considerably longer period of time.

It also offers a greater form of protection as it enables you to prevent a third party from using a design that creates the same overall impression of your design (whether or not they have copied yours), whereas an unregistered design action can only be brought where it can be shown that a third party has copied the design feature (for example, its exact shape or appearance).

Registered UK and EU designs last for (a maximum of) 25 years, provided certain formalities are met. For example, the application to register a design must be made within 12 months of that design first being publicly disclosed, and the design must meet certain requirements for novelty in order to qualify for protection.

Design Prosecution

After the Application has been made, the Controller shall cause the Application to be examined and issue an Examination Report, stating his objections, if any.

After the Application has been accepted, the particulars of it along with the representation of the Article, sought to be protected, are registered and published.
A design registration is in force for a period of 10 years, and can be renewed for a further period of 5 years.

A design can be cancelled at the instance of any Interested Person filing a Petition, after the registration of design on the grounds of:

• Design is previously registered in India
• Prior Publication, anywhere
• Design is not New
• Prohibited Grounds of Registration
• Beyond the Scope of Definition of Design

The Registered Proprietor has the opportunity to file a Counter Statement arguing the grounds set forth in the Petition so filed, and both sides are allowed to file evidences in support of their pleas, maturing into a hearing.

Community design protection
Limiting design protection to the territory of individual EU countries could have led to a division of the internal market and would have constituted an obstacle to the free movement of goods. To prevent this, a unitary design right was established by Regulation No 6/2002 on Community design in 2002.

The Regulation brought into being a one-off, inexpensive procedure for registering designs with the European Union Intellectual Property Office (EUIPO). Those registering designs are granted the exclusive rights to use the design and to prevent any third party from using it anywhere in the EU for up to 25 years. The Regulation also provided for ‘Unregistered Community Designs’ that under certain conditions can also benefit from protection from deliberate copying without prior registration with the EUIPO. In both cases, to be eligible for protection, designs must be new and must have an individual character. The aim of the Community design system is to ensure accessible design protection that suits the needs of all types of enterprises in the EU.

In 2007, the EU acceded to the Geneva Act of the Hague Agreement on the international registration of industrial designs. This agreement allows applicants to register a design in countries that are party to the Hague Agreement with a single application to the World Intellectual Property Organization.

Accession to the Agreement allows EU companies to obtain design protection not only throughout the EU with the Community Design, but also in the countries which are party to the Geneva Act. It simplifies procedures, reduces the costs for international protection and makes administration easier.