“Looking Good” – The Appeal of Designs in Getting Noticed by the Customer Mboya Rose Dar-es-Salaam, Tanzania 22nd to 26th , August, 2011 Contents Introduction to Intellectual Property Industrial designs and Business Strategy Registration of IDs Other legal instruments for protecting industrial designs Objectives Differentiate the various types of IPRs Identify economic importance of Industrial designs Ways of protecting ID Other legal Instruments for protecting ID 1. Introduction to Intellectual Property Rights 1. Types of Property What is property? Something owned - any tangible or intangible possession that is owned by someone. Types of Property Tangible Intangible Intangible:- invisible, exist only as rights of ownership Intellectual For a long time people have been heavily relying on Tangible Property The disadvantage is that they diminish with time, land cannot be expanded 1.Introduction to Intellectual Property Rights 2. What is intellectual Property Intellectual property are creations of the mind that can be protected by law. These are a group of properties that are intangible As people move from the resource based economy to knowledge based economy, intellectual property plays a very vital role. 1. Introduction to Intellectual Property Rights 3. Types of IP Rights Intellectual Property Copy Rights Patent Industrial Property Utility Model Industrial Design Plant Breeders Rights Trademarks 2. Industrial Design and Business Strategy i) What is an Industrial Design? The ornamental or aesthetic features of a product. In other words, it refers only to the appearance of a product and NOT the technical or functional aspects. Any composition of lines or colour or any three dimensional form whether or not associated with lines or colours; provided that such forms or composition gives a special appearance to a product of industry or handicraft and can serve as a pattern for a product of industry or handicraft Industrial designs Industrial designs is relevant to a wide variety of products of industry, fashion and handcrafts from technical and medical instruments to watches, jewelry, from house holds products, furniture and electrical appliances to cars and architectural structures, textile. Industrial design is also important in relation to packaging containers and get up of products. Industrial designs For businesses, designing a product generally implies developing the product’s functional and aesthetic features taking into consideration issues of manufacturing or the ease of transport, storage repair and disposal Two dimensional designs Three Dimensional design Examples of Industrial Designs ii) Importance of Industrial Designs in Business Enterprises devote a lot of time and resources to enhance the design appeal of their products. New and original designs are often created to appeal to the market needs Customize products to appeal to specific market segments Small modifications to the design of some products e.g watch, may make them suitable for different age groups, cultures or social groups Create a new niche market. In a competitive market place, many companies seek to create a niche market by introducing creative designs for their products to differentiate them from those of their competitors Importance of Industrial Designs in Business Strengthen their brands images. Creative design are often combined with distinctive trademarks to enhance the distinctiveness of a company’s brand (s). Many companies have successfully created or redefined their brand image through a strong focus on product design It adds value to a product. Importance of ID While the functional elements of a bottle do not generally differ significantly from products to products. its appearance is likely to be one of the major determinants of success in the marketplace. This is why industrial design registers in many countries have along list of designs for simple products such as bottles iii) Why protect ID Strengthening competitive edge The creator is granted the exclusive right to prevent others from unauthorized copying, imitating, making, selling, or importing any product in which the design is incorporated or to which it is applied and thereby strengthen your competitive advantage Return on investment Registering a valuable designs contributes to obtaining a fair return on investment made in creating and marketing the relevant product, thereby improving your profit Why protect IDs Revenue generation Registered design may be licensed (or sold) - Industrial design may be assigned, licensed, mortgaged or transferred, enter markets that you are otherwise unable to serve. Encourages fair competition and honest trade practices which in turn, promote the production of a diverse range of aesthetically attractive products Why protect IDs Business asset increasing commercial value of a company and its products –the more successful a design the higher the value is to the company Industrial design forms part of the fixed assets of a company. A protected design may also be licensed or sold to others for a fee. Through this you may be able to generate more revenues iv) Integrating Design protection into broader business strategy Decisions on how, when and where to protect a company’s industrial designs may have an important impact on other areas of design management. It is important to integrate issues of design protection into the broader business strategy of an enterprise. For example the cost of protection, the effectiveness of protection and issues of ownership of designs, may be important considerations when deciding: Integrating Design protection into broader business strategy Whether to undertake a design development in house or to commission an outside agency The timing of the initial use of a new design in advertising, marketing or public display in an exhibition Which export markets to target If, when and how to license or assign a design to be commercially exploited by other companies in return for economic remuneration a) Who owns a design The creator of a design is usually the first owner of the design, unless there are special circumstances: Employee Commissioned work However the designer of a product may have automatic copyright protection of the drawings of the original design 3. Registration of an Industrial Design i) Basic requirements for registration a) The design must be new or Original. independently created by the designer and is not a copy or an imitation of existing designs An industrial design is deemed to be new if it has not been disclosed to the public, anywhere in the world, by publication in tangible form or, in Kenya by use or any other way prior to filing date or where applicable to the priority date of the application for registration. Requirement for registration cont.. It may involve whether there is an examination or not as to the form and substance of the application for the registration of the design, especially to determine novelty or originality. novelty or originality may differ from country to country, In most countries an Industrial Design must be registered in order to be protected under industrial design law. registration process itself varies from country to country. Absolute/universal novelty Requirement of novelty is found in all laws, however the nature of the novelty differs amongst the laws of various countries. Absolute novelty The design must be new as against all other designs produced in all other parts of the world at any previous time and disclosed by any tangible or oral means Universal novelty On the other hand, a qualified standard of novelty is sometimes required. Requirement for registration cont.. b) Industrial application An industrial design must be capable of being reproduced by industrial means (industrial application). Also it must be possible to apply an industrial design to an article which may be either two-dimensional or threedimensional. Requirements for registration cont.. c) Must have individual character. If the overall impression produced by the design on an informed user differs from the overall impression produced on such a user by any earlier design which has been made available to the public. Features of appearance which are dictated essentially by technical or functional considerations are not protectable Some offices register designs based on formality others like Kenya do substantive examination to check the existing designs on the register for novelty or originality ii) Registration of many designs In some countries (Kenya) you may apply for registration of many designs (10,50) through a single application as long as they are all related to the same product or class of products under international classification or to the same set or composition of articles If you have designed a set of chairs, tables and dressers and would like to protect them, many countries would allow you to file a single application covering all of them paying only one single fee as they all belong to the same class of products, Registration of many designs cont.. Generally although fees are charged for each additional design, they are significantly less than the cost of filing a separate application for each design In some countries however you may have to file a separate application for each design. Many of this countries while limiting an application to a single design, permit several variants of that design; others allow for an exception to the single design rule when all the designs relate to a set of articles iv) Registration of variant designs Variants would include for example two earings, which differ in that one is a clip-on and the other is for pierced ears. To be considered variants, the design must be applied to the same article and must not differ substantially from one another. v) Industrial Design Registration Process Formality Examination Application Publication Registration Novelty Examination Opposition period vi) Rights provided by design protection When an ID is protected by registration, the owner is granted the right to prevent unauthorized copying or imitation by third parties. This include the right to exclude others from making, offering, importing, exporting or selling any products in which the design is incorporated or to which it is applied. The law offers the creator of an industrial design or his successors the exclusive right to sell or cause to be sold for commercial or industrial purposes the goods in which the design is incorporated Vii) Deferment of publication Once a design is registered it is entered into the design register and published. In some countries/regions (not applicable to Kenya), it may be possible to request deferment of publication in which case the design will be kept secret for a certain period specified by the relevant law. Preventing publication for a period of time may be preferable for strategic business reasons viii) Protection of unregistered designs For some countries or common economic areas such as the European Union, it possible to obtain limited industrial designs protection for unregistered designs for three years from the date on which the design has been published in the European Union. The unregistered designs provides companies with the opportunities to test market their products before going through the efforts and expense of registering designs. Many of which may succeed in the market ix) International classification system Classification according to the Locarno Agreement Establishing an International Classification for Industrial Designs (Kenya uses this system) Tanzania x) Protecting designs abroad If company intends to export products bearing an original designs or intends to license the manufacture, sale or export of such products to other firms in foreign countries it is important to protect the design in those countries How do you protect ID protection is territorial , thus limited to the country where protection is sort There is a grace period of six months from the time on which you applied for protection in the first country to claim right of priority when you apply for design protection in other countries. Once this period has elapsed, you will not be able to protect in those countries Ways of protecting National route Applying separately to the national IP Offices of each country where protection is sort This is very cumbersome and expensive as translation into the national languages is generally required as well as payment of administrative (legal fees) Regional Route if interested in a group of countries which are members of regional agreements e.g ARIPO, OAPI, Benelux Designs Office BDO for protection in Belgium, the Netherlands and Luxembourg International route Companies interested to register their designs in many countries may also use the procedures offered by the Hague Agreement Concerning the International Deposits of Industrial Designs, a WIPO administered treaty. An applicant from a member country to the Hague Agreement can file a single international application with WIPO. The design will then be protected in as many member countries as designated This method is simple and cheaper The cost of protection varies depending on the number of designs to be protected and the number of countries where protection is sought xi) Hague Union Members: 48 Armenia, Albania, Belgium, Belize, Benin, Botswana, Bulgaria, Côte d’Ivoire, Croatia, D.P.R. of Korea, Egypt, Estonia, European Community, France, Gabon, Georgia, Germany, Greece, Hungary, Iceland, Indonesia, Italy, Kyrgyzstan, Latvia, Liechtenstein, Luxembourg, Mali, Moldova, Monaco, Mongolia, Montenegro, Morocco, Namibia, Netherlands, Niger, Romania, Senegal, Serbia, Singapore, Slovenia, Spain, Suriname Syrian Arab Republic, Switzerland, The former Y.R. of Macedonia, Tunisia Turkey, Ukraine (48) Kenya and Tanzania not members xii) Duration Industrial designs protection generally lasts for a period that varies between 10 and 25 years depending on the country where protection is sought In Kenya it is a maximum of 15 yrs ID may not always be adequate for products that are linked to passing trends e.g fashion products Copyright protection is for 50 to 70yrs depending with the laws of the country IDs.: National examples of Maximum Duration of Protection 10 12 14 15 years: years: years: years: Australia, Canada, China Taiwan United States of America Benin, Brazil, Egypt, Japan, Singapore, Russia, Ukraine 25 years: Bulgaria, France, Germany, Italy, Romania, Switzerland, Turkey 50 years: Monaco 4) Other legal instruments for protecting industrial designs Differences between copyright protection and industrial design protection for designs In some countries the applicable laws allows for protection of ID as copyright for example in the design of textile and fabrics. In many countries you may obtain cumulative protection (copyright protection and ID protection) which can exist concurrently for the same design, While in a few countries, the two forms of protection are mutually exclusive a) Protection of ID as Copyrights What is Copyright? Simply is “the right to make copies” Copyright protection subsist in any original works of art and authorship once fixed in any tangible medium of expression, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device Copyright only extent as much to the expressions of and NOT to the underlying ideas or facts. Copyright/ID protection of IDs Registration Under ID law the ID generally needs to be registered by the applicant before publication or public use anywhere, or at least the country where protections claimed The registration certificate provided by the protection is useful incase of infringement and provides a solid basis from which you may enforce your exclusive rights Copyright/ID protection of IDs Copyright works considered to be original subsists without formalities While registration is not necessary for protection, copyright depositories exist in some countries where you may deposit your design and obtain certificate In Kenya the design must not have been in the disclosure for more than 6 months before filing Scope of protection ID laws the right conferred by registration of ID is an absolute right in the sense that there is infringement whether or not there has been deliberate copying To enforce rights under copyright law, the copyright owner must prove that the allegedly infringing works is a direct reproduction of the work protected by copyright law Costs Registering your designs in the countries you are interested in means that you have to pay the applicable fees. You may also require services of IP Agent to draft the application In copyright given that no formal registration of works protected by copyright is required by most countries there are generally no direct costs relating to copyright protection, however there may be costs related to the deposit of the work, in countries where it exists Demonstrating proof of ownership in case of disputes b) When can trademark law protect a design A trademark is a distinctive sign generally a word, a logo or a combination of the two) used to differentiate the products of one company from those of others There are instances where the form, design or packaging of a given product may be considered to be a distinctive feature of a product in question and may be protectable as a three dimensional trademark. Protection of ID as Trademarks The bottle of the coca cola or the triangular shape of the toblerone chocolate bar are some examples Trademark protection has the advantage of being renewable indefinitely The cost of protecting a design as a trademarks differs from those of a trademark c) Protection under the laws of unfair competition In many countries IDs are often protected under the laws on unfair competition. Thus a design may be protected against acts of unfair competition including, in particular, slavish copying and acts that may lead to confusion, acts of imitation or use of third parties reputation However protection under unfair competition is generally significantly weaker and infringement is more difficult to prove. Kenya is yet to enact a law on unfair competition THANK YOU FOR YOUR ATTENTION!