One of the most important types of intellectual property rights is industrial design, which constitutes the aesthetic aspect of an article. A new and innovative design can distinct the product from other similar products on the market that have the same function and increase the company's revenue and profitability. For example, there are different brands of mobile phones on the market, all have almost the same function and provide the same capabilities to users. What makes these phones distinctive from each other is the unique design of each one, from the design of the iPhone (Apple) and Samsung to the special design of the BlackBerry and Motorola.
Studies show that the use of intellectual property rights has increased dramatically, in recent years and various companies and organizations have focused on it. As a result, the use of industrial designs for mobile phones, screens, and even desktop icons (electronic symbols associated with computer codes) is increasing. Therefore, in this article, we will review the industrial designs and the most important related subjects analyze some of their similarities and differences with different types of intellectual property, including patents and trademarks.
What is Industrial Design?
Attracting customers has always been essential to high-tech products and there has always been a challenging competitive marketplace to sell the products.
In order to solve this challenge and introduce the product and its functional differences to the customer, various tools can play a role, one of which is the trademark.
This category of intellectual property rights, of course, is an external tool related to the reputation and credibility of the manufacturer and as a result, the product that initially attracts the attention of potential consumers. Studies show that this tool is not enough to bring to an end the process of attracting customers and keeping their loyalty and therefore it is necessary to use other tools. To better understand, consider a product that, due to technical innovations and creative techniques, has a significant market share compared to similar products on the market. This product is marketed by a famous company and has its own unique brand. Everything seems to be ready for the success of the product, but if the appearance of the product and its design couldn’t attract consumer's eyes, it wouldn’t have the necessary effect, and therefore, commercial failure will be possible. This is where industrial design comes into play.
A quality design (like Apple iPad) can bring customer loyalty. Successful businesses are trying to integrate design as a memorable factor within the production process and to consider aesthetic considerations alongside with functional aspect and its technical improvements. Meanwhile, in addition to technical innovations that are protected by patent registration, the distinctive appearance of the product and its innovative designs can also be protected by registration of industrial designs. Look around you and at all of the different products including washing machines, cars, and cell phones. When the function and appearance of the product are in harmony with each other, results in the success of the product in the market. In fact, the two characteristics, optimal function, and attractive design, all together, increase the value-added of the product and the possibility of commercialization success.
To give a concise and comprehensive definition of industrial design, we can say that industrial design refers to the aesthetic aspects of a product and may consist of three-dimensional features ( e.g. the shape of an article), or two-dimensional features(e.g. patterns, lines or color). Industrial design is one of the essential factors to attract customer attention which encourages him to prefer one product to another and use it more. This has led to the use of this type of intellectual property in a wide range of industries and industrial products. Some of the industrial design applications are as follows:
• Watches and jewelry
• Fashion and other luxury goods
• Industrial and medical equipment
• Furniture and home appliances
• Electronic devices
Since industrial design refers to the aesthetic aspects or outward appearance of a product, it makes the product more attractive and increases its commercial value. This greatly facilitates the marketing and commercialization of the product. It should be noted that industrial design does not protect any technical or functional features of the product. When an industrial design, under industrial design national law, is fully visible and satisfies all the registration requirements, then it could enjoy exclusive rights.
The duration of the protection of industrial designs varies from country to country. Industrial designs may be registered for protection for 5 years and renewed for periods up to 15 to 25 years (According to The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS)). The minimum period of production according to the most national law is 10 years.
Why should industrial design be protected?
The owner of an industrial design holds the exclusive right to prevent other persons from copying it or free riding. In other words, owners of protected designs would be able to prevent third parties from making, selling, or importing articles that infringe protected design.
Protecting industrial designs clearly has many benefits for owners of rights. However, preventing imitation and copying is not the only advantage, but also it brings other benefits. For example, the owner of a registered industrial design safely develops his products and ensures a fair return on investment. This increases his motivation for further activities and additional investments, and along these lines, consumers also benefit from new and creative designs. As mentioned industrial design provides the exclusive rights which usually allow the owner to generate additional revenue through its licensing where the owner unable to enter.
From another perspective, the benefit for the final consumer and, in general, the public can be seen. Protecting an industrial design promotes fair competition and honest trade practices which led to attractive and diverse products by increasing creativity and innovation.
From the perspective of manufacturing and economics, the protection of industrial design can improve creativity in the industrial and manufacturing sectors while contributing to commercial expansion. So, the export potential of national products increases and economic growth and development on a national and international scale is guaranteed. All of this suggests that protecting industrial design has benefited both IP owners, as well as final consumers and as a result, the economy and industry benefit from this.
Industrial designs can be considered as a simple and cost-effective solution for product development and protection. For this reason, both developed and developing countries (regardless of the level of industrialization and development), as well as small and medium enterprises and even individual artists and craftsmen, can use intellectual property to protect their creative designs.
How Can Industrial Designs Be Protected?
In most countries of the world, for protecting the industrial design, they need to be registered to have protection or enjoy the exclusive right. As a general rule, to be registrable, the design must be “new” or, under some laws, “original”.The meaning of “new” or “original” may differ from country to country. There are requirements of new design and not similar to existing designs, along with minor differences in the design registration process. Moreover, an industrial design must be able to be reproduced or recreated through industrial solutions, which is also called industrial application.
The possibility of protection of two-dimensional or three-dimensional designs is another key issue to consider when registration the industrial designs. It is possible to emphasize the colors and aesthetic lines in two-dimensional designs and in contrast, in three-dimensional designs, the shape and visualization of the product and its configuration are discussed.
Normally, the time taken for registering a design is shorter than the time taken for registering a trademark. This is so that in most countries, it takes about three (3) to six (9) months to obtain an industrial design right. After filing an application by the applicant, the Intellectual Property Offices make their usual examination, which can be classified into two groups: Formal Examination and Substantive Examination.
It should be noted that the main differences in the process in the laws of different countries relate to the industrial design examination. For example, all offices carry out an examination to ensure that the design meets the minimum requirements. However, some offices also consider the novelty and originality by Substantive examination. The disclosure of an industrial design also depends on the national laws of the countries and, in some cases, the decision of the applicant, which can be disclosed before filing an application, at the time of filing or a limited period of time after filing.
Finally, it should be noted that Registering of design as an industrial design has not been the only way to protect it, and industrial designs can, under certain conditions, may also be protectable under unfair competition law and as work under copyright law:
Copyright: Your creative design can be protected as a work of art and under copyright law, depending on the type of design. Even in some countries, an industrial design may be able to be protected under both the industrial designs and the copyright system (the existence of coexistent protection for a particular design). However, this is not possible in most countries, if the owner chooses one type of protection, protection through the other intellectual property system is lost.
The unfair competition prevention act: An industrial design can also be protected by the unfair competition prevention law, which emphasizes the aspects of imitation and copying of competitors that can prevent fair competition in the market.
Obviously, the levels of protection of each of these strategies (registration as an industrial design, protection of the design as a work of art under copyright law, or the unfair competition prevention law) have been different and will have different conditions and requirements, depending on the type of strategy.
Difference Between an Industrial Design Right and Other IP Rights
A question that may come into mind is the difference between industrial design and other types of intellectual property rights. For example, what are the differences between industrial design and a trademark in terms of application and protection process? Can industrial designs be registered in the patent system? What are the differences between them and what is the scope of protection of each of them?
In response, it should be noted that an industrial design is distinguished from a trademark primarily because it is constituted by the appearance of a product, which must not necessarily be distinctive (a prime requirement for a trademark). This clearly illustrates that each of these two important types of intellectual property rights is focused on different issues (aesthetic aspects versus distinguishing between the services and products of a particular company) and that makes the function and justifications for protecting industrial designs and trademarks quite different.
Industrial designs are different from patents; An industrial design is related to the appearance of the product and practically does not take into account the technical aspects. However, the purpose of registering a patent and related requirements is to create a new product or process as a new invention.
International Protection of Industrial Design
As a general rule, and in accordance with the Paris Convention industrial design protection rights are limited to the country where protection is sought and granted. The Paris Convention for the Protection of Industrial Property was signed on March 21, 1883, in Paris. Paris Convention plays an important role in terms of industrial property protection and covers the different forms of industrial property including patents, trademarks, industrial design, utility models, trade names, geographical indications (appellation of origin), and unfair competition prevention.
If you want to register your design in several countries, generally, you will have to apply for protection separately in each country, which requires different steps (depending on the applicable laws in each country) to obtain exclusive rights. However, the Hague agreement helps to facilitate this process.
It should be noted that industrial design protection is territorial. Accordingly, if an individual or company wants to file the application in different countries, it must file separately in each of them which is difficult and requires a lot of time and money. Indeed, the management of international registration is facilitated through international agreements.
The most well-known agreement for international protection of industrial designs is the Hague agreement which enables creators to seek protection for their designs in a large number of territories, simultaneously. The Hague System provides a practical solution for registering up to 100 designs in 74 contracting parties, through the filing of one single international application.
It is worth noting that each contracting party of the Hague Agreement committed to the protection of industrial designs in accordance with national laws. Obviously, similar to other international agreements (such as the Paris Convention, the Berne and Madrid Conventions), a registered industrial design have at least the same effect in each designated Contracting Party as a regularly-filed application for the grant of protection of the industrial design under the law of that contracting party.
As mentioned, this international agreement helps to facilitate the process of registering industrial designs, through one single international application filed with the WIPO. In principle, paper applications may be submitted either directly to the International Bureau or via the Office of a Contracting Party.