Industrial Designs
University of Turin Law School / WIPO Academy
LLM IP 2011 Class Minutes, taken on 18 November 2011
Facilitator: Mark Bosshard
Minutes by Jesse Kim, Olga Romanenko, Roberta Gilli
Table of Contents
1.
2.
3.
4.
5.
General principles of law applicable to designs
Aesthetic function
Ornamentality & separability
Different approaches
a. United States and China
b. Korea
c. Europe
Other general principles
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1. General theory of law applicable to designs
The first rationale for protection of industrial designs is that: if
an industrial design is a creation of a human being, it should be
protected by copyright; such a creation sounds like a
"property,” which may qualify for “long protection.”
The second rationale for protection is that: an industrial
design is something useful for "progress." In designs, there are
three aspects of progress can be considered:
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Aesthetic growth
Growth of market (for aesthetic goods)
Cultural growth (patent-like protection of industrial
designs)
The TRIPS Agreement has two provisions that deal with
industrial designs: Articles 25 and 26. All kinds of industrial
design protection must be consistent with these provisions.
The TRIPS Agreement does not specify which type of protection
(e.g. copyright or “patent-like”) a member state should grant to
industrial designs. Article 25 of TRIPS, however, requires that
protection be granted for industrial designs that are:
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Independently created
New (novel)
Original
Therein lies the problem: the notion of "independently
created” appears to imply that it is similar to a copyright-like
regime, but Article 25 contains other additional requirements of
“novelty” and “originality”, which are seemingly more
appropriate for a patent-like regime of protection.
In reality, TRIPS does not really tell much on this issue, and the
recommended approach is therefore not clear. As far as TRIPS
is concerned, it can be summed up as: "a member state must
protect industrial designs that are new and original."
According to Article 25 of TRIPS, an industrial design is not
deemed to be new and original if it does not significantly differ
from known designs or combinations of known design features.
Important: industrial design protection does not extend to
"technical things" because they fall under the patent/utility
model regimes. The "utility" aspect of the product must reside
outside the scope of industrial design protection, as per Article
25 of TRIPS.
TRIPS further deals with the following:

Designs must serve commercial purposes (market
approach) => "market protection" is minimum
LLM IP Turin 2011 Class Minutes: Industrial Designs
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protection of industrial designs (an international
rationale)
Minimum duration of protection under TRIPS is 10
years, but member states can increase it.
Article 26 of TRIPS deals with scope of protection. The owner of
a protected industrial design shall have the right to prevent
third parties, not having the owner’s consent, from making,
selling, or importing articles bearing or embodying a design
that is a copy, or substantially a copy, of a protected design,
when such acts are undertaken for commercial purposes.
Other than the above-mentioned requirements, member states
are free to choose the mechanism of industrial design
protection: via copyright, patent, sui generis, unfair
competition law, etc.
The Hague system for industrial designs is a PCT-like
filing/registration system. It is more procedural than
substantive in nature.
2. Aesthetic function
The protection of industrial designs involves the aesthetic
function of a product. First of all, it is somewhat strange to call
it that because aesthetics and functionality are two different
things.
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Utility model = “functional”
Industrial designs = “aesthetically functional”
This "overlap" between industrial designs and patent-like
systems creates some issues. To adopt patent protection to
protect industrial designs, the same threshold for patents must
be applied also to industrial designs. However, the three basic
requirements for a patent do not fully apply to industrial
designs. In many jurisdictions, therefore, patent protection is
not consistent with the characteristics of industrial designs.
In general, courts have had to perform some "acrobatics" to find
the right form of protection for industrial designs.
3. Ornamentality & separability
"Ornamentality" is one of the requirements for obtaining a
design patent stipulated, for instance, under the U.S. industrial
design law. The ornamental design need not be artistic or
aesthetically pleasing. To be ornamental, the design must have
an overall distinct appearance that is not dictated by the
function of the article of manufacture. In other words, the shape
or configuration of a functional object is protectable by a
design patent if the shape or configuration is not governed
solely by the function of the object. The existence of alternative
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designs often confirms that the design satisfies the ornamental
requirement.
"Doctrine of Separability": one can protect a product under
copyright if he/she takes away the aesthetics from the
usefulness of his/her product and still find a product worth
protecting. For example, there is no "separability" in chairs. A
determination of separability, either physical or conceptual, is a
prerequisite to copyright protection for the design of a useful
article. In its statutory form, the separability inquiry asks
whether the aesthetic features of a useful article can be
identified separately from, and can exist independently of, the
work’s utilitarian functions.
4. Different approaches
4a. United States and China
In the United States, with very narrow exceptions, industrial
designs are not protected by any one body of intellectual
property law. This is not so in other parts of the world, such as
Japan and the European Union. Rather, owners of industrial
designs wishing to protect them under the United States law
must resort to a combination of different types of protection:
design patent, trade dress, and copyright.
The requirements for a U.S. design patent are as follows:
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The subject matter must be an article of manufacture
Original
Novel
Non-obvious
Ornamental
Copyright protection for industrial designs in the U.S. is quite
narrow. Its protection extends only to certain works of
authorship such as pictorial, graphic, and sculptural works. To
obtain copyright protection for industrial designs is rather
difficult in the U.S. Many products of industry and handicraft
will not meet the conceptual or physical separability tests for
copyright protection. It is only when the item is the product of
artistic creativity, free from the dictates of utility or
functionality, that copyright protection will be available.
Industrial design protection in the U.S. explicitly requires
separability because it wants to keep industrial designs off
copyright protection as much as possible, thereby refraining
from long-term protection of designs. From an industrial design
point of view, it is strange and anti-competitive (for the market)
to use copyright as a means of protection. China takes an
approach similar to that of the U.S.
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4b. Korea
The Korean industrial design law provides broad protection for
designs as follows:
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Copyright protection
Sui generis protection is provided to compensate for
the limited applicability of copyright protection and to
create a new form of protection, i.e. design registration.
Design registrations in Korea have the following
characteristics:
o 15 years' protection;
o Requirement of industrial applicability
o Requirement of creativity: a simple fact that
the design is not a mere copy of another (a low
threshold)
o Excludes from protection designs that consist
of a shape that is essential to the utility
function of the product => must use utility
protection instead
o Requirement of worldwide novelty: the
product must not be known to the public or
has been published; if there is a prior art
anywhere in the world, it is not new => no
protection => could be discouraging to Korean
enterprises. (In Europe, however, there is no
worldwide scope of prior art.)
Unfair competition provides the owner of industrial
design with a right to prevent third parties from
making a “dead copy” (identical copy) of its protected
industrial design.
Unregistered new design is protected from the “dead
copy” within 3 years starting from the date when such
design was made available to the public. At that, the
owner of unregistered new design is entitled to file an
application for registration of such design within 1 year
starting from the date when the design was made
available to the public. In case of a positive decision, the
protection is granted against both “dead copy” and
“similar copy” for a term of 15 years.
4c. Europe
While largely similar to the Korean approach, there are mixed
forms of protection in Europe as follows:
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3 years' protection on unregistered designs, under
unfair competition
25 years' strong protection on registered designs,
under registered design sui generis protection
70+ years' protection on the subject-matter (shape) of
unregistered and registered designs, under copyright
Unlike the U.S., the EU has removed the separability
requirement in copyright protection for industrial designs. A
key rationale here is that art and culture are not a market per se
and therefore should not suffer from too many restrictions in
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protection. However, copyright protection in Europe varies
from country to country because many European courts, in
reality, still use and apply separability under a different name in
order to avoid over-protection. For example, courts now
construe "aesthetic value" as separability.
In terms of separability in copyright in Europe, France is an
exception. "Unity of the Art" employs the notion that there is
no reason not to grant copyright protection on any aesthetic
creations, including industrial designs. Loosely speaking, France
wanted to protect its fashion creations without having to spend
money. However, fashion and many other kinds of shapes are
not a suitable subject of copyright protection because of
duration among other reasons. The resultant over-protection
is damaging to the French system as well as French producers
and designers. A 3-year protection is more consistent
particularly with fashion.
Exhaustion of rights applies to industrial design protection. In
Europe, there is Community exhaustion.
At least in Europe, the best strategy for protecting an industrial
design is to register the design, have 25 years' strong
protection, and then decide at the end of the 25 years whether
the design has artistic value, in which case it may be possible to
protect it practically indefinitely under trademark law.
The European Community Regulation on Industrial Designs
6/2002 governs the framework of protection of industrial
designs in Europe.
5. Other general principles

The effectiveness of unfair competition in the
protection of industrial designs depends on the general
conception a country has on its IP law: traditional
(“imitation is pro-competitive, except patents”; a
European view) vs. economic (“prevention of copying“
is the general rule).
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The novelty requirement is crucial in
broadening/narrowing the scope of protection of
industrial designs.
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In general, industrial designs do not easily qualify for
copyright protection. Where there is an accumulation
of industrial design protection and copyright
protection, copyright protection is limited by the
requirement of separability.
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In jurisdictions such as the EU and Korea, there is a
grace period of 1 year in which to file a design
registration.