by Gabriel Di Blasi*
Industrial design is a kind of creation that involves aesthetic and functional features of the same object. It is recognized as a special object of intellectual property that is entitled to protection. According to the World Intellectual Property Organization -WIPO, industrial designs are the crossroads of art and technology, since the designers strive to create products whose shapes or appearance will satisfy the aesthetic preferences of consumers, as well as their expectations with regard to the functional performance of those products.1
In recent years, with the increasing importance of industrial design and the globalization of trade and business, the absence of consistent standards for industrial designs has become increasingly clear and problematic.
The difficulty is that there are many interpretations of where art and technology meet and the nature and scope of protection that is appropriate for this type of property. Therefore, there is a broad range of definitions, or in some instances insufficient definitions. There are also significant differences in the national laws for the protection of industrial designs, or in some instances a lack of specificity in the law, such as regarding the industrial design term and scope of protection. For example, although the Agreement on Trade Related Aspects of Intellectual Property Rights – TRIPS mandates the need for protection of all new and original industrial designs, there is no definition or guidelines for such designs.
Furthermore, the growing tendency to protect designs arising from new technology, such as computer images (graphic user interface – GUI, icons and type fonts) and functional features of an object as Industrial Design (ID), confirms its importance. At the same time, it shows the need for harmonization of laws around the world so that there is reasonable and consistent protection of these technologies since they expand the realm of industrial designs.
The purpose of this paper is to consider the current tendencies governing industrial design protection throughout the world. Features of the variations in protection were discussed during the International Federation of Intellectual Property Attorneys – FICPI Industrial Design Symposium and Roundtable, which took place in Rome in November 2001. The Symposium concluded that there is a pressing need to harmonize design protection and laws, especially in order to reduce the uncertainties regarding the requirements for applications, costs and scope of protection.
1) Industrial Design Protection:
The first question is “What can be protected as industrial design?” Industrial design would only refer to the appearance of a product, characterized by its colors, lines, materials etc. However, the European Union (EU) Directive defines “design” as “the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colors, shape, texture and/or materials of the product itself and/or its ornamentation”2. From this disposition, not only will the appearance of a product be protected, but also the product itself, provided it goes accordingly to the definition of design and complies with the requirement of being new and having individual character.
In the United Kingdom, a design is defined as the “features of shape, configuration, pattern or ornamentation applied to an article by any industrial process.3” Accordingly, design protection excludes the method or principle of construction and the functional features of the article. The same standard governs design protection in Australia, where an industrial design means the overall appearance of the product resulting from one or more visual features of the product4.
In the United States, industrial design protection is available to any new, original (non-obvious) and ornamental design of an article for a manufactured article. Also, in other countries, such as South Africa and United Kingdom, “original” means merely that it was the un-copied work of author, whereas the EU Directive stated that design must be new and have individual character. The concept of “original” is different from “individual character”.5 The EU Directive considers that a design has “individual character if the overall impression produced on the informed user differs from the overall impression produced on such a user by any design which has been made available to the public before the date of filling of the application…”6
In Japan, it is the shape, pattern or colors or any combination of these features in an article or part of an article, which have an aesthetic appearance and have industrial use, are novel and not obvious. In Brazil, industrial design is an ornamental arrangement of an object or any ornamental arrangement of lines and colors that can be applied to a product, providing a new and original external visual result, and that can serve as a model for industrial manufacture.7
The Brazilian definition also restricts protection to the “external visual result,” raising the issue of whether designs are limited to visible features. A German decision holds that only visible things can be protected. However, in the United Kingdom there is a decision granting the industrial design protection to the interior of a chocolate Easter egg. In the United States, there is an understanding that if the internal feature of a design is intended to be noticed it could be protected.
Regarding novelty, this is a common and essential requirement in national and regional law. Depending on the national law, the novelty requirement can be considered relative or absolute. A majority of countries requires absolute novelty in their laws and that should be the rule. As to prior publication, it should be novelty destroying except for publications by applicants. In this case, some countries, such as the United States, Canada and European Union, have a one-year grace period from the actual filing date in those countries.
It is important to notice that some industrial property laws refer to the possibility of recognizing industrial design not only for manufactured products but also for works of handcraft, which are generally properties protected by copyright protection. This scope of protection, where available, is based on the fact that an industrial design can be regarded as an artistic expression that responds partially to an aesthetic concern of the designer.8 The EU Directive includes the protection for handicrafts. Nonetheless, the tendency in a majority of jurisdictions is to limit industrial design protection to industrially manufactured products, with copyright protection seemingly better suited to handicraft protection.
In Canada, handicrafts are protected by both industrial design and copyright laws. In the United States handicraft can be protected as industrial design while in Brazil it is only protected by copyright law. A third perspective is seen in Indonesia law, where the definition of industrial design not only includes handicrafts but provides that design is “…a creation on the shape, configuration, or the composition of lines or colors, or lines and colors, or the combination thereof, in a three or two dimensional forms which gives aesthetic impression and can be realized in a three or two dimensional pattern and used to produce a product, goods or an industrial commodity and a handicraft.”9.
According to the above mentioned, there are number of common elements that characterize industrial designs and that should be taken into account for harmonization. Visibility and the aesthetic requirement are often considered a condition for the recognition of an industrial design when incorporated to a product. However, even if the national laws consider relevant the aesthetic requirement for determining an industrial design, this requirement lacks objectiveness, since it depends on the personal opinion. Thus, it should only be considered the general visual features resulting from the combination of lines, colors, shapes etc that gives a product a new and original result. Eliminating the aesthetic requirement would allow the protection for both functional and non-functional designs.
2) Application Requirements and Publication:
The requirements for application vary from country to country. In general, drawings or photographs are required. However, in the United States, for example, the applicant must also describe the design in a single claim.
Perhaps the big issue for the harmonization is the differences between acceptable and strategic drawing styles and formats and the differences with a written specification, provided by the national and regional laws. This diversity may be a cause of uncertainty among those who should be using the registered design, unregistered design and patent design regimes in order to define the scope of the protection.
Given the majority standard, in considering harmonization, the preferable approach would seem to be that applicants should be required to present only clear representations of the design, showing the design and its relevant features and a claim or statement of novelty, specifying what the applicant wishes to protect.
Regarding the publication, in Canada, South Africa and the United States design application are not published and are kept secret until granted. In Brazil the applicant can request that an application be kept in secrecy for a period of 180 days from the filing date.10 This will also delay the prosecution and granting of the application for 180 days. Also, in Japan an applicant can request that a design be kept secret but the period of secrecy is for as long as 3 years after the registration has been granted. This is a special type of application called a “secret design”.11
In Europe, at the time of filing an application the applicant can request that the publication of the design be delayed for a period of up to 30 months from the application date or from the date of priority.12
The tendency is toward maintaining secrecy of the application until the grant of design rights.
3) Functional Features and Spare Parts:
Normally the appearance of a product or the functional features of the shape affect technical performance of that product, because its functions will not be performed without these features. Thus, they may be regarded as necessary for achieving the technical performance of the product. Although the industrial design protection is indicated only for the appearance of the product and not for its functionalities, functional features originality should be taken into account by the national laws.
Under South Africa’s law, there is a special provision for functional design that is similar to a utility model because it protects a new functional improvement in an object. However, it also requires the presence of an aesthetic feature. Protection of the design is based on the drawings and photos, whereas utility model protection is determined by the claims. Another distinction in South Africa’s law is in regard to the aesthetic design, which uses the classic definition of industrial design. Australia does not exclude from registration designs with functional features as well. According to the Design Act 2003, a visual feature may, but need not, serve a functional purpose.13 United States design law protects only the appearance of the product but not the structural or utilitarian features. Japanese law does not protect a design “composed only of shapes that are indispensable in securing the functions of an article”.14 In the European Union, article 7 of Directive 98/71/EC restricts the protection of products having functional features, since it states that “A design right shall not subsist in features of appearance of a product which are solely dictated by its technical function.” Also Article 8 (1) of Council Regulation 6/222 in respect of Community Unregistered Design Rights (CUDR) repeats the above wording of Article 7.
In Brazil, the shape of an object that is determined essentially by technical or functional considerations will not be protected.
Related to the functional features topic, spare parts are individual components of a complex product that is composed of multiple components which can be replaced thus allowing for the disassembly and reassembly of a product.15
The European Directive protects spare parts as industrial designs if the component part is visible during the use of the article and capable of being replaced when repairing the complex product. Component parts that are not visible, as well as parts that have designs dictated by function and “must-fit” parts of complex products cannot be protected. Similarly, in Japan, functional spare parts are excluded from protection. Regarding the protection of spare parts in Brazil, these can be registered and protected if they are made and sold separately, and the spare part can be identified and detached from the body of the main object. The shape of the part must be completely defined or finished. Examples of spare parts that are entitled to design registration include replacement parts, such as the bumper of an automobile or the head of a razor.
In the United States, spare parts are protected provided they are non-functional.
FICPI through its International Design Group of which this presenter is a Member is currently completing an international survey of design protection of spare parts so that this important issue can be considered further.
Therefore, according to above mentioned, considering that industrial design is the appearance of a product, the appearance dictated by its technical function should not be considered a bar for registration. Moreover, the same rationale should also apply to spare parts protection.
4) Regimes of Protection and Substantive Examination:
Basically, there are three regimes of industrial design protection: copyright; registered sui generis design rights; and unregistered sui generis design rights.16 In addition, there are some national laws that protect design by patent. Each regime impacts the nature of design protection in many respects, such as the examination of the design, terms of protection, litigation effects etc.
Japan and Canada have registration regime with substantive examination. Also in Italy, Argentina and Brazil, there is a registration regime but there is no substantive examination. The Hague Agreement also allows the registration without substantive examination. On the other hand, industrial designs are included within and as part of the US patent regime.
In further contrast is the unregistered design regime, which is based on a liability system, such as the unfair competition law. It is considered a quasi-copyright protection. The UK relies on this regime, which is available for both functional and non-functional three-dimensional designs.
Regarding the examination of the design, there are some national laws, such as in the US, Japan and Canada, which require substantive examination based on a novelty search. These laws defy harmonization, since, for example, the Hague Agreement accepts a registration system, without substantive examination.
In Japan, the substantive examination is conducted after the formality check is complete. This examination is considered important because it gives assurance that the design has fulfilled all the administrative requirements.
In Brazil, the registration system is applicable but no substantive examination is required. However, if the industrial design rights are subjected to litigation, a substantive examination is mandatory prior to the court hearing.
In Australia, the examination of a design can be requested by any person or on the initiative of the authority who granted the right but it is a post – registration examination only. In the examination, if there are grounds for revoking the registration of the design it will be considered null.
There are several distinctly different philosophical positions that are reflected in distinctly different regimes for protection.
There are clear obstacles to finding agreement on a regime, particularly in light of the regime with examination in contrast to the regime without substantive examination. However, the trend is addressed to a registration regime without examination.
The term of design protection depends on the system of protection, which can vary from 10 to 25 years. For example, in Japan, the protection of a design is 15 years from the date of registration. In Australia, the maximum term of registration of a design is 10 years from the filing date of the design application in which the design was first disclosed. In the EU, protection is for an initial 5-year term from the date of filing the application, renewable for additional 5-year terms, to a maximum of 25 years of protection. In Brazil, the term is 10 years renewable for periods of 5 years and limited to a 25-year protection. However, in the United States, the design patent term is 14 years from the date of grant.
The tendency indicates that for harmonization of the design protection term should, in this presenter’s view, be 25 years with a 5-year renewal.
6) Variants of the Designs:
As to the same design, in UK, the variants can be applied to articles normally sold or used together. Canadian law allows variants and United States law, “obvious variants”, i.e. the designs that have the same concept with minor variations in the modified forms. The Hague Agreement allows unlimited multiple applications in the same class. In Brazilian law, it is possible to register up to 20 variants of the same design, provided they are intended for the same purpose and retain the same preponderant characteristics.
7) Cumulative Protection:
With regard to dual cumulative protections for design, as above mentioned, the design has a dual character of a work of art, since it can be considered an expression of the designer’s creativity, cumulative with its industrial application. It means that the design can be protected by at least two different regimes. It is possible to protect design by the copyright law, since it can be considered a work of art; and by the sui generis regime of design protection due to the industrial applicability feature. Furthermore, a trademark protection may be also possible.
The law in the United States does not allow the protection of an industrial design as a work of art (copyright). This would only be possible through the special regime for industrial design protection. Copyright protection would be possible if the external features of the product can be detached from the product itself (notion of separability and independence). For example, an artist’s drawing that is used as fabric pattern.
Other countries, such as Switzerland, accept the dual cumulative protection if a design has a high artistic character. Otherwise, if this feature is not present, only the sui generis protection is allowed.
The United Kingdom have three alternatives types of protection namely (copyright, registered design and unregistered design rights).
Regarding the trademark protection, it is possible when the applicant uses the design itself as a distinctive sign. The trademark will not protect the design as such, but it will identify and distinguish products or services in the marketplace. The scope of granted rights is very different, since the design protection grants that its holder can prevent unauthorized third parties from exploiting any product embodying the design, whereas the trademark protection prevents unauthorized third parties from using the design (trademark) in connection with specified goods. The US law allows the protection of a design as trade-dress.
When the national law allows the cumulative protection, the choice of protection strategy will depend on the applicant. The tendency is that this cumulative protection does not create any obstacle to harmonization, since they are distinct and independent kinds of protection. The main problem brought by cumulative protection is in searching, which is time consuming and depends on a careful analysis of the strategy.
8) Scope of Protection:
The scope of protection conferred by design rights also varies from country to country. For example, the EU Directive includes any design that “does not produce on the informed user a different overall impression”.17
In Japan, design protection gives rights to the design and similar designs. Infringement occurs if unauthorized third parties exploit by manufacturing, assigning, importing, etc. articles to which the registered design or design similar thereto is applied. The scope of protection is determined by the drawings and the explanation attached to the application.
The Australian law confers the following exclusive rights to a design owner: (a) to make or offer to make a product, in relation to which the design is registered, which embodies the design; (b) to import such a product into Australia for sale, or for use for the purposes of any trade or business; (c) to sell, hire or otherwise dispose of, or offer to sell, hire or otherwise dispose of such a product; (d) to use such a product in any way for the purposes of any trade or business; (e) to keep such a product for the purpose of doing any of the things mentioned in paragraph (c) or (d); and (f) to authorize another person to do any of the things mentioned in paragraph (a), (b), (c), (d) or (e).18
Harmonization of the scope of protection should, it is believed, be based on an objective standard, such as Locarno Classification and the Hague Agreement requirements. The protection would only refer to a design or an adaptation for a specified class of article according to Locarno Classification.
9) New Technologies:
The recent tendency has been to extend industrial design protection to new technologies, such as web designs (icons and graphical user interface).
The Brazilian Design law contains no restrictions with respect to the design protection available for web designs, such as computer images (icons, Graphic User Interfaces -GUI and type fonts). Regarding icons and type fonts, they can be protected by design registration as an ornamental standard of lines and colors, which may be applied to any product, including the website and the screen of the mobile phone and portable digital media player with hard disk, such as IPOD19. The advantage is that there is no restriction in using an icon for any product, since it is considered a pattern. In some cases, these designs can be protected as a trademark as well. As to GUI, it can be protected by design registration as an ornamental standard of lines and colors as well, even though this design may be a temporary application on the website and the screen of the mobile phone and IPOD. The focus on protecting is based upon the ornamental standard of lines and colors of the GUI. Design protection is suitable since a GUI is applied to the industry and fulfils design law requirements.
In Europe, the protection of graphic symbols and typographic typefaces are allowed, but it excludes computer programs. Considering that GUI is part of a computer program, in principle, it will not be considered a design. However, this disposition is considered senseless from a legal and economic point of view. Under the United States law, all of these technologies can be protected by design patents.
There are many differences in national treatment of industrial design. The absence of consistent standards for industrial designs has become increasingly problematic for those applicants who need a system without uncertainties regarding scope of protection, requirements and examination. This need is reinforced by the increasing number of technologies that can be protected as ID, such as computer images and functional features.
In order to reach a harmonization of industrial design laws among countries it will be necessary to make several changes in the current national laws. Some of the following proposals for harmonization were presented during the FICPI Design Symposium and Roundtable and then they were consolidated in the final resolution that also was submitted by FICPI to WIPO.
- The total term of protection should be 25 years in renewal intervals of 5 years.
- Registration should require a representation of the design showing the design and its relevant features.
- A claim or statement of novelty in which the new features to be protected are specified should be required. It would be useful in case of infringement and discussions on the validity of the design.
- Absolute novelty requirement should be required and prior publication should destroy novelty. However, a one-year grace period should be granted to applicants.
- The scope of the protection should be determined by the Locarno Classification.
- Examination should only include formal requirements, so that a registration regime is created without substantive examination. This is a quicker and cheaper regime of protection.
* Report of the Ninth Session of the Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (WIPO).
1 ORGANIZAÇÃO MUNDIAL DA PROPRIEDADE INTELECTUAL, Industrial Design and their relation with works of applied art and three-dimensional marks, Genebra, 1992, p 3. Disponível em www.wipo.int/edocs/mdocs/sct/en/sct_9/sct_9_6.doc. Acesso em 19 de julho de 2007.
2 Article 1, a of the Directive 98/71/CE of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs.
3 Report of the Ninth Session of the Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (WIPO)
4 Chapter 1, part 2 of the Designs Acts 2003
5 FICPI Submission to WIPO
6 Article 5.1of the Directive 98/71/EC
7 Industrial Property Law 9279 of 1996.
8 Report of the Ninth Session of the Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (WIPO)
9 Industrial design protection in Indonesia: a comparative study of the law on Industrial Design Protection between Japan and Indonesia. p.21.
10 Article 106.1 of Law 9279/96
11 Industrial design protection in Indonesia: a comparative study of the law on Industrial Design Protection between Japan and Indonesia. p.47.
13 Chapter 1, Part 2, Section 7 (2).
14 Industrial design protection in Indonesia: a comparative study of the law on Industrial Design Protection between Japan and Indonesia, p.44.
15 Directive 98/71/EC
16 Resource Book on TRIPs and Development, p. 334.
17 Article 9.1
18 Part 2.10.1 of the Design Act 2003.
19 Trademark of Apple Compute