Protection of industrial designs in questions and answers

An artistic or design solution for an item defining its appearance is considered to constitute an industrial design.

In daily life design usually means the appearance of the product in whole relating to its functionality. An armchair, for instance, is considered to have a good design if it is comfortable for sitting in it and looks good. In business designing of a new product usually means development of its functional and aesthetic features subject to the aspects such as its selling on the outlet, production cost or ease of transportation, storage, repair and utilization.

However, in terms of intellectual property an industrial design concerns only ornamental or aesthetic aspect of the product. In other words, as regards the armchair, it only relates to its appearance. Although a design of the product may have technical or functional features, industrial design as a category of intellectual property relates only to aesthetic nature of final product unlike any technical or functional aspects.

Industrial design is crucial for a wide variety of industrial or handicraft goods and fashion industry: from technical and medical equipment to watches, jewelry and other luxuries; from cookware, toys, furniture and household appliances to vehicles and buildings; from textiles to sports goods. Industrial design is also important for packages, containers and appearance of products.

As a rule, industrial designs can be:

• three-dimensional, such as the shape of a product;
• two-dimensional, such as ornaments, drawings, outlines and colours of a product; or
• combined, corresponding to the combination of one or several three-dimensional or two-dimensional industrial designs.

Industrial design provides added value to a product. It makes a product attractive for consumers and can even be its unique feature that enables the growth of sales volume. Thus protection of valuable industrial designs must become the most significant part of the strategy of any designer or manufacturing entity.

An industrial design protected through its registration with a national or regional intellectual property office guarantees to its owner the exclusive right to prevent from unauthorized copying or imitation by other persons.

The practical side of it is important because it increases competitiveness in the industry and frequently ensures extra income due to one or several factors:

• by registering an industrial design, you can prevent from its copying or imitation by competitors and thereby strengthen your competitiveness;
• registration of a valuable industrial design enables receipt of fair benefit from investments made in creation and marketing of relevant products and thereby increases your income;
• industrial designs are business assets that can increase commercial value of the enterprise and its products; the more successful is the industrial design, the higher is its value for the enterprise;
• a protected design can also be an object of license (or concession) to other persons for a given remuneration; by giving licenses on the industrial design you can access the markets that otherwise would be unavailable for you;
• registration of industrial designs encourages fair competition and honest trade that in turn creates incentives for production of a wide variety of aesthetically attractive products.

If an industrial design is protected through registration, its owner is granted the right to use the industrial design at its own discretion, if it does not violate the rights of other persons, and to prevent from unauthorized copying or imitation of the industrial design by third persons. It includes the right to prohibit to all other persons to produce, offer for selling, import, export or sell any product embodying or bearing the industrial design.

Let’s suppose that your enterprise created a design of an umbrella using innovative solutions, registered it with the national intellectual property office as an industrial design and consequently obtained the exclusive rights to such umbrellas. It means the following: if you find out that a competitor manufactures, sells or imports umbrellas with the same or similar appearance, you can prevent him from using your industrial design and receive compensation for damages that have been caused to your business by such illegal actions.

Thus, although you can’t impede anyone to manufacture competing products, you can prevent from manufacturing items that have appearance similar to your industrial design and thereby exclude illegal use of the results of your creative work. You can consult an intellectual property specialist to get more detailed information on how to protect your rights.

It is usually a person that created an industrial design or, if this person is employed, their employer who may file an application for registration. A natural person (for example, a designer) or a legal entity (for example, an enterprise) may be an applicant.

In any case an application may be filed by the applicant themselves or through a patent attorney. If you are a foreign applicant, you may be required that a patent attorney is authorized by the intellectual property office of the given country for conduct of such cases.

The creator of a design (i.e. the designer), in the absence of specific circumstances, is usually the owner of the industrial design. Yet in most countries if an employee of an enterprise created an industrial design in compliance with the conditions of the employment agreement, i.e. during working hours and in the framework of their duties, the design itself and the respective rights to it will belong to the employer. Otherwise a written agreement on concession of rights may be required for the employee to its transfer.

If the industrial design is created by a designer hired by contract, the rights usually belongs to the enterprise that charged the designer with creation of this industrial design. In such cases the industrial design is considered to be created by a person that charged the designer with its creation and that thereby is the owner of the rights. Confusion at a further phase can be avoided if the issue of ownership is resolved in a contract with a designer. You should also keep in mind that a designer can automatically obtain copyright protection for drawings of the original design and this issue should be settled in the contract as well.

In the Republic of Belarus, like in most countries, in order to obtain protection under the legislation on industrial designs an industrial design must be registered.

An application has to be filed with the national intellectual property office of the country where protection is sought so that an industrial design was registered. In the Republic of Belarus the National Center of Intellectual Property is such office.

It should be particularly noted that some countries or entire economic regions, such as the European Union, provided the possibility to obtain limited protection for unregistered industrial designs valid during 3 years from the date of publication in the European Union of information on the industrial design (in the Republic of Belarus only registered industrial designs are protected).

Unregistered industrial design gives to the enterprises the possibility of preliminary testing of their products on the market, without spending time and resources on registration of all available designs, many of which will possibly not be in demand and succeed among consumers. Some designs do not "live" long on the market, especially fashion items. For such products unregistered designs are a good alternative. However, after manufacturing of the product designers have at their disposal a period of up to one year to carry out registration. The protection which an unregistered design enjoys is weaker because as compared with the registered design such rights are much more difficult to enforce and the term of protection is less, only 3 years against 25 years, provided for registered designs in the European Union countries.

In some countries there may be alternative ways of obtaining protection for industrial designs:

• depending on the national legislation of the countries and the type of industrial design one of such alternatives to obtain protection consists in the copyright legislation; as a rule copyright provides exclusive rights to literary and artistic works; as some industrial designs in certain countries may be considered as works of fine and applied art, they may be protected by copyright which is a very attractive option for small and medium sized enterprises; in the Republic of Belarus such industrial designs are protected by copyright;
• moreover, in some countries (including the Republic of Belarus) industrial design functioning as a trademark in selling of the product may be protected as a three-dimensional trademark; it occurs in the case where the shape or the package of items possess distinguishing power;
• in some countries the legislation on unfair competition may protect an industrial design of an enterprise from its imitation by competitors as well.

As a rule, in order to be registered an industrial design must meet one or several following main requirements depending on the legislation of the country:

• a design must be new; an industrial design is considered to be new if it is not known from information made publicly available in the world before the date of the priority of the industrial design; an identical industrial design must not be publicly presented before the date of filing of an application for registration;
• a design must be original; the features of the appearance of an item must be subject to creative work of the author of the industrial design and not to be a copy or an imitation of existing designs;
• in some countries an industrial design must possess "individuality"; this requirement is considered to be met if the general impression produced by the industrial design on the informed consumer differs from the general impression produced on them by any earlier known design commercially available.

An industrial design must be new and original in order to be registered in the Republic of Belarus.

Traditionally protectable designs relate to such products as the shape of shoes, earrings or the ornament of a teapot. However in the digital environment such protection progressively extends to a number of other goods and types of industrial designs in some countries. These are, for instance, "icons" on the the screen of a computer monitor created by computer codes, fonts, graphic images on monitors, mobile phones, etc.

Unregistrable in the Republic of Belarus are:

• solutions that do not meet the requirements of novelty and originality;
• solutions, the characteristics of which are determined exclusively by the technical function of the product; such technical or functional features of the design may be protected, depending on the features of each case, as other industrial property objects (such as inventions or utility models);
• solutions that are contrary to public interests, principles of humanity and morality;
• architectural objects (including industrial, hydrotechnical and other stationary installations), except for small architectural forms; printed matter as such;
• printed matter as such;
• objects of changeable shape from liquid, gaseous, granular and similar substances.

In some countries registration will be denied if a design embodies protected national symbols or emblems (such as the national flag).

In addition, some countries exclude handicraft products from the scope of protection of industrial designs, since their domestic legislation on industrial designs requires that the product to which the industrial design is applied is industrial and that it can be reproduced by industrial means.

The legislation of the Republic of Belarus does not contain this requirement to industrial designs and an item whose appearance is determined by the industrial design may be either industrial or handicraft product.

The national legislations of the countries have differences in regard to restrictions on registration as an industrial design. Therefore it is recommended to consult an intellectual property specialist or the relevant national office in the country where protection of an industrial design is sought.

It is generally advisable to apply for patent protection for an invention or a utility model in order to obtain exclusive rights to functional characteristics of the product. If these characteristics are not easily obtained on the basis of manufactured goods, it is advisable to retain them as trade secrets.

A new product often combines functional features with innovative aesthetic elements. For instance, you have developed a new mobile phone. Although the mobile phone may result from creation of a series of designed electronic components and may be protected by a patent for an invention (or several patents), as the first step the appearance of the mobile phone could be registered as an industrial design. Can you apply for both? Yes, you can.

In order to register an industrial design in the Republic of Belarus the following actions should be done:

• to complete an application form indicating the author of the industrial design and the person in whose name the patent is claimed, as well as their place of residence or the location;
• to form set of images giving a full detailed idea about the appearance of the product, its aesthetic features, particularly about its shape and configuration, ornament and colour scheme;
• in some countries you may also be required or provided the possibility of drawing of a statement on the novelty of an industrial design; in such case the expert of the intellectual property office may request providing of an industrial design itself in order to better understand its substance and determine its structure or material used;
• to pay the established fee for filing of the application and registration.

You can also resort to the services of a patent attorney who can help you to complete an application and carry out the entire registration procedure. In this case you will need to issue a document confirming the transfer of authority to your representative.

Forms of documents relating to industrial design registration in the Republic of Belarus, as well as the list of officially registered patent attorneys of the Republic of Belarus are uploaded on the website of the National Center of Intellectual Property.

Some intellectual property offices carry out registration of an industrial design only after formal examination of the application in order to ensure that all the formal requirements are met. Other offices carry out substantial examination of the application in order to reveal earlier registered industrial designs for the purpose of establishing the fact of novelty and/or originality of the claimed industrial design. An increasing number of countries (including the Republic of Belarus) carry out registration of industrial designs without examination of novelty and/or originality.

Once registered the design is included in the National Register of Industrial Designs and is published in the Official Bulletin, whereupon an industrial design patent is granted.

In some countries/regions the applicant may request deferment of publication, and in this case the appearance of the industrial design is not disclosed for a certain period established by the legislation of the country. Deferment of the publication for a given period can be a good preference in terms of the strategic commercial objectives of the enterprise. The legislation of the Republic of Belarus does not provide for such deferment.

It depends on the national intellectual property office, but as a rule, an industrial design registration procedure lasts from 6 to 12 months or longer depending on the following factors: whether the expert expressed any objections and whether the country provides for the possibility of filing objections before the registration of the claimed industrial design.

In the Republic of Belarus, information about a patent is published and a patent is issued after 8–10 months from the date of filing an application, if an application is drawn up in full compliance with the requirements of the legislation, an applicant does not file amendments to the application materials and the fees are paid in due course and terms.

In different countries the actual costs of this procedure vary significantly. However, it is important to keep in mind the types of costs that may arise during the procedure of obtaining of protection.

The fees for the registration of an industrial design are paid to the national or regional intellectual property office. The amount of the fees usually depends on the number of industrial designs for which registration is claimed and the number of countries in which registration is sought. Information on more precise amounts of the fees can be obtained with a patent attorney or in the respective intellectual property office.

You will also bear the costs relating to the services of a patent attorney involved in the procedure of registration, if you decide to resort to their services for the purpose of drawing of an application.

Most countries require the payment of the fees for renewal of the term of validity (usually for a period of 5 years) in order to maintain the exclusive rights to the industrial design.

There may be costs relating to translation of the materials of the application for an industrial design to a foreign language if you are planning to obtain protection abroad.

The patent fee rates levied for registration of an industrial design in the Republic of Belarus are published on the website of the National Center of Intellectual Property.

If you intend to obtain protection for an industrial design through its registration, it is extremely important to maintain the confidential nature of the industrial design. The reason consists in the fact that the main requirement for granting of protection to an industrial design is usually the requirement of novelty. If you show the industrial design to other persons, it is recommended to make a written agreement containing a provision on confidentiality of information indicating the fact that the appearance of the industrial design is kept secret.

An industrial design, which has already been publicly presented, for example, in an advertisement, a catalog or a leaflet of your enterprise, can no longer be considered as being new. Thus, it passes into the public domain and cannot obtain protection if the legislation of the country does not provide for a “grace period” or the priority by the earlier filed application can be obtained.

In some countries, the legislation allows a grace period for registration of an industrial design, the term of which is usually 6 months or a year from the date when the information on the design has been disclosed or published.

It occurs in the case when items embodying an industrial design is sold, demonstrated at a trade exhibition or fair or published in a catalog, a leaflet or an advertisement before filing of the application. During this period such items can be sold on the market without loss of novelty by the industrial design and, therefore, it is still possible to apply for its registration.

In the Republic of Belarus the applicant has the right to disclose information on the substance of an industrial design provided that the application for a patent for an industrial design will be filed with the National Intellectual Property Center no later than 6 months from the date of disclosure. Otherwise, the industrial design loses its novelty.

However, since it is not provided in all countries and, in any case, is limited in time, it is often advisable to maintain the confidentiality of the information on the industrial design before filing of the application for obtaining protection for it. In addition, during the grace period, there are no exclusive rights to industrial design (though it can automatically obtain protection under copyright or the legislation on unfair competition, depending on the provisions of the national legislation).

The term of protection of a registered industrial design varies in different countries, but is usually at least 10 years (although it is often longer). For example, 14 years for the USA industrial design patent and up to 25 years for the European Union industrial design patent.

In many countries, after the expiration of 5 years the owners of the rights are required to renew the term of the industrial design protection.

In the Republic of Belarus, the industrial design patent is valid for 10 years and can be extended for another 5 years.

Enterprises often spend considerable time and resources to ensure more artistic appeal of their products. New and original designs are often created for the purposes of:

• compliance of a product with different market segments: small changes in the design of some goods (for example, watches) can make them more suitable for different age, cultural and social groups; although the main function of watches remains the same, children and adults usually have different taste as regards design;
• creation of a new market niche: on competitive market many enterprises strive for creation of a market niche by offering designs of their products in order to make them noticeable and different from competitors' products; it may concern conventional products such as locks, shoes, cups and saucers, as well as such expensive items as jewelry, computers and cars;
• strengthening of brands’ position: creative designs are often accompanied with trademarks in order to raise the value of a manufacturer’s brand; many manufacturers have successfully rebranded to change their image particularly emphasizing on the design of products.

The decision on how, where and when to apply for protection of industrial designs may have a significant impact on other aspects of asset management of the enterprise. Therefore, it is important to include the issues of obtaining protection for industrial designs in an integrated business strategy of the enterprise. For example, the type of protection, respective costs, protection effectiveness and the issues of ownership of industrial designs may represent important reasons that are taken into account when deciding:

• whether or not to develop an industrial design by the enterprise itself or to engage an off-site resources;
• when to start exploiting a developed industrial design in advertising, marketing or at exhibitions;
• at which external market to aim;
• when, how and whether or not to grant a license or assign the rights to an industrial design to other enterprises for commercial use in order to gain extra income.

Many designers obtain protection of various aspects of their works by means of various intellectual property rights. However, it is important to keep in mind the basic difference between inventions/utility models and industrial designs. Inventions and utility models are technical solutions (devices) leading to improvement of functional characteristics of the product while industrial design protection is carried out in regard to the appearance of the product itself.

The section is based on the materials
of the magazine “Intellectual Property in Belarus”