DESIGN PROTECTION

While patents protect new technical innovations or the way a product works, a registered design (a.k.a."design patent" in the US) protects the way your product looks.  These oft-neglected rights are used to protect new industrial designs.  You may have designed a new pattern, bottle, or music stand that has an aesthetically pleasing shape.  Design rights typically last for a shorter period of time than patents - in some countries it’s 10 years, in others 14 or 15 years, or thereabouts.

 

Designs protect the shape and appearance of a 3-D object, typically made in an industrial process. 

 

Once again, designs protect the way something looks rather than the way it works.  If you don’t think that design rights are important, take another look at the ‘look’ of Apple’s products.  It’s one of the few companies that grasp the tremendous value that good industrial design can bring to the table, provided that it’s protected.  In fact, one of the infamous mobile phone wars is taking place based upon Apple’s design rights that they obtained for the look of the iPad, iPhone and the design of the screen icons.

Another example is for the shapes of ordinary household goods, things which can no longer be patented because they’ve been around for ages (such as bottles, toasters, kitchenware, and containers), but which may have been redesigned to have a different look to them. 

When Procter & Gamble brought their new Head & Shoulders anti-dandruff shampoo to market, they designed a bottle with a characteristically long neck, which was combined with auspicious coloring.  P&G, as they do, spent a huge amount of money on advertising, and the product was met with great success.  A few months down the line, a lower-priced anti-dandruff shampoo made its way on to the market, manufactured by a competitor.  How was it packaged?  You guessed it - in a bottle with the same color combination as Head & Shoulders and sporting the same long-necked bottle design.  P&G took action and managed to make the competitor change its coloring, but they had neglected to file a design registration for the shape of the bottle and were thus unable to stop the rival bottle from occupying shelf-space next to theirs.  They lost the exclusivity which they could have built up in a unique product design. 

A very costly oversight and one that ensured that P&G now file design applications for every single product shape or design that they come up with.

So, although you may have obtained protection for your invention and the way it works using your patent portfolio, it may be that there are stylistic elements to the actual product that you think will find favor with consumers.  It’s useful to note at this stage that it is also possible to file a design application at the same time as filing the Patent Application. The guys who make new shaving systems, like Gillette and Schick are masters at this – filings patent to protect the way their new multi-blade system works, but filings design applications, or design patents as they’re called in the US, for the way their handles look.

To recap: while patents protect the way your invention works, design registrations protect the way your product looks.  

Registered designs (called design patents in the US) protect the appearance of an article.  This is different to a patent.  A patent that protects the underlying technical principle or invention on that an article is based.  Even though the underlying principle of operation may be the same as a known article, a new appearance may be protectable by way of a registered design.

Registration Classes into which registered designs or design patents are divided

Designs are grouped into different classes of technology and a design application may be filed in one or more classes, to provide protection against infringing products falling in the same class.  It is important to note that, in many countries, the protection is limited to articles falling in the same class for that the design has been registered.  The classes into that designs are classified can be found on the WIPO website.  Search for Designs Classification Locarno Convention and you’ll find it.

Always check for updates to the designs register before you file a design, if you decide to do it yourself.

Registration of more than one design for an article

 

In a case where an article has both aesthetic and functional features, In many countries, it is only possible to obtain registration of one example or embodiment of your design in a design application.  So if you produced a new range of footwear with four or five variants, the design laws of many countries require you to split up the design into four or five design/design patent applications with only a single embodiment per application.

Must I keep my design secret until I have filed a design application?

 

Unlike a patent for which absolute novelty is required, design applications in certain countries may be registered up to 6 months after the design has been disclosed or released to the public.  Do not, however, assume that this is the case in your country, or whether this would be acceptable to Patent/Design registration offices in foreign countries. As with patents, it’s best to keep it secret until you’ve filed an application for a design or a design patent.  You should realize that if another party starts to produce an article during such a six month grace period (if available in your country) it would not be possible to stop them from continuing to make it, even once your design right has been granted, so apply for registration before disclosure.

Protecting a new & original design

First and foremost, it’s best to keep the design secret, so do not market it or sell it until you or your patent attorney has filed registered design application.  As with patents, I’d always suggest contacting a patent lawyer to discuss the protection of your design(s). It usually takes about six to eight months from the date of filing the application until notification of registration is received from your country’s designs office.  If foreign registered designs are to be applied for, notify your patent lawyer at the outset, as foreign design applications must be filed in a number of countries within six months after the filing of a registered design.  Such a design application may then claim the priority date of this initial design application in your country for further design applications overseas.

Enforceability of a registered design

As with patents, an enforceable right is only obtained once a design application or design patent application has been granted.  A design is only registered or granted a few months after filing of the design application.  You do not have an enforceable right until such time as you have received notification of registration of the design from the relevant IP Office.  If you become aware of infringers copying your design, it is sometimes possible to apply to have the registration process expedited following that legal action can be taken.

This is where designs applications are quite useful – while they only provide very narrow protection for the looks of your product, they are granted quickly (less than 6-8 months in most countries) and are of highly persuasive value in infringement proceedings.  The reasons for this is that a judge only has to look at the representations in your designs application and the alleged infringing article, without having to resort to a detailed technical enquiry, as is the case with patents.   Thus, the costs of litigation are quite less than those found in patent litigation, and the proceedings are sometimes shorter as well.

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Carel Smit

c/o Biophile Pty Ltd

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