Group Reports at APAA Designs Committee in Fukuoka
October 25, 2004
********************
AUSTRALIA
by David Carmichael and Peter Heathcote
LEGISLATION
The new Designs Act 2003 (http://scaleplus.law.gov.au/html/pasteact/3/3632/top.htm)
came into effect on the 17th June, 2004. The Designs Regulations 2004
(http://scaleplus.law.gov.au/html/pastereg/3/1838/top.htm) for implementing the new
Act came into effect on the same date. The main features of the Act are summarized
as follows:
Definition of Design
A "design" is defined as the overall appearance resulting from one or more visual
features of a product (Section 5). A visual feature includes the shape, configuration,
pattern and ornamentation of a product (Section 7). A design may serve a
functional purpose (Sub-Section 7(2)).
Registrable Design
A design is a registrable design if it is new and distinctive when compared with the
prior art base for the design as it existed before the priority date of the application
(Section 15).
The prior art base comprises any designs that were previously:

used in Australia; or,

published in a document anywhere in the world.
For a design to be considered "new", there must be an absence of an identical prior
design, whilst to be considered "distinctive" a design must not be similar in overall
impression to a prior design (Section 16).
The design must create an overall impression that is not "the same or substantially
similar" to any existing designs. Minor or insignificant changes are ordinarily
considered to be non-distinguishing (Section 16).
APPLICATION AND REGISTRATION PROCEDURE
A design application may be in respect of:
(a)
one design in relation to one product; or
(b)
one design that is a common design in relation to more than one
product; or
(c)
more than one design in relation to one product; or
(d)
more than one design in relation to more than one product, if each
product belongs to the same Locarno Agreement class (Section
22).
Upon the filing of an application for a design, the application undergoes a
formalities check by the Australian Designs Office (Sections 39 and 40). Upon
passing the formalities check, the application proceeds to registration or publication
depending upon what is requested by the applicant (Section 35). There appears to be
no benefit in filing a multiple design application in that the Designs Office treats the
designs as separate and there is no saving in fees.
The formalities check is a relatively quick procedure, with the timeframe between
the filing of the application and the subsequent registration or publication of the
design being of the order of a few months.
HOWEVER, IT IS TO BE NOTED THAT INFRINGEMENT PROCEEDINGS
IN RESPECT OF A DESIGN REGISTRATION CANNOT BE COMMENCED
UNTIL SUCH TIME AS THE DESIGN HAS BEEN CERTIFIED, AS
DISCUSSED BELOW (SUB-SECTION 73 (3)).
Certification
A request for certification of a design registration can be made at any time and by
any person (Sections 63-68).
Upon the filing of a request for certification, the Australian Designs Office conducts
a substantive examination procedure including a search of the prior art.
IF THE DESIGN REGISTRATION SUCCESSFULLY PASSES
EXAMINATION AND IS ACCEPTED BY THE EXAMINER, A
CERTIFICATE OF EXAMINATION IS ISSUED AND THE REGISTRATION
IS DEEMED TO BE CERTIFIED.
Term
The initial term of a design registration is five years from the filing date of the
application in which the design was first disclosed.
SUBJECT TO THE PAYMENT OF A RENEWAL FEE BY THE END OF THE
INITIAL FIVE YEAR PERIOD, A DESIGN REGISTRATION HAS A
MAXIMUM TERM OF 10 YEARS (SECTION 46).
Infringement
Infringement is the unauthorised "use" in Australia of an identical design or one that
is substantially similar in overall impression to the registered design (Sections 71-76).
INFRINGEMENT PROCEEDINGS CAN ONLY BE BROUGHT AFTER A
REGISTRATION HAS BEEN EXAMINED AND CERTIFIED AS VALID
(SUB-SECTION 73(3)).
RIGHT OF REPAIR
THE ACT ALSO INCLUDES A DEFENCE AGAINST INFRINGEMENT
WHERE A DESIGN REGISTERED 'SPARE PART' IS USED TO REPAIR A
'COMPLEX PRODUCT' SO AS TO RESTORE ITS OVERALL
APPEARANCE IN WHOLE OR PART (SECTION 72).
REPORTED DECISIONS OF AUSTRALIAN DESIGN CASES
K-Aire Pty Ltd v. Polyaire Pty Ltd [2003] FCAFC 310 (22 December 2003)
This was an appeal to a full bench (Mansfield, Emmett & Bennett JJ) of the Federal
Court of Australia from orders by a judge of the Supreme Court of South Australia.
The primary judge held that a registered design No. 110628 (“the Reg. Design”)
owned by Polyaire was valid and had been infringed by the application of a fraudulent
imitation of the Reg. Design to articles manufactured and sold by the Appellants (KAire) and made orders restraining K-Aire from manufacturing or selling any article in
the form of the infringing articles.
The Reg. Design was registered in respect of outlet director parts for air-conditioning
units, sometimes referred to as “grilles”.
The Appellant (K-Aire) appealed against the primary judge’s decision on
infringement, and against the finding of validity only as a fall-back position, that is, if
there was no infringement, then there was no complaint about the validity of the Reg.
Design.
The appeal decision concerned the necessary elements for a finding of
infringement by fraudulent imitation given a finding there was no obvious
imitation.
Section 30 of the Designs Act 1906 deals with infringement of the monopoly in a
registered design. Relevantly to the present case, the section provides:
“30.(1) A person shall be deemed to infringe the monopoly in a registered
design if he, without the licence or authority of the owner of the design:
(a) applies the design or any fraudulent or obvious imitation of it to any
article in respect of which the design is registered”.
In respect of the relevant legal principles, the Court stated (among other things):
“In Malleys Limited v J W Tomlin Pty Limited (1961) 180 CLR 120
(‘Malleys’) at 127, the High Court set out the test for infringement of a design
under s 30:
‘There is infringement in any one of three cases – that is, where the design that
has been applied is:- (i) the registered design (ii) an obvious imitation of the
registered design (i.e., not the same but a copy apparent to the eye
notwithstanding slight differences) and (iii) a fraudulent imitation (i.e., a copy
with differences which are both apparent and not so slight as to be
insubstantial but which have been made merely to disguise the copying).
Visual comparison will establish (i) or (ii) but a finding of fraudulent imitation
must require something more because in such a case visual comparison is not
of itself sufficient to establish imitation; otherwise it would be an obvious
imitation.’
“Thus, a distinction is drawn between ‘slight differences’, where visual
comparison may establish obvious imitation, and ‘differences which are both
apparent and not so slight as to be insubstantial’, where visual comparison is
not sufficient. There may be fraudulent imitation where those not
insubstantial differences may be disregarded if they have been made merely to
disguise copying. A finding of fraudulent imitation requires a finding that
there is imitation, notwithstanding that the design applied by the alleged
infringer is not apparently an imitation, because the evidence showed that the
design had been applied. One must be able finally to say that the product is an
imitation visually recognisable as such (Firmagroup Australia Pty Ltd v Byrne
& Davidson Doors (Vic) Pty Ltd (1986) 11 FCR 415 (‘Firmagroup’) at 417
per Fox J with whom Jenkinson J agreed).
“… The essence of fraudulent imitation is that the design of an accused article
has knowingly, consciously or deliberately been based on or derived from a
registered design, although neither dishonest intent nor deliberate or conscious
intention to copy is a necessary element (Dart at 411-412)”.
The primary judge had held the Reg. Design to be “new and original” and therefore
not invalid on the basis of three novel features, namely

the shape and configuration of the end parts of the blades [of the grille] and
the shape and configuration of the receiving points [for the end parts of the
blades] in an outer frame and control bars;

a chamfered inner lip or overhang on the top of the frame of the blade box
[that is, the top edge of the frame was chamfered];

vertical ribs on the outside of the blade box.
The designs of the accused articles did not include the chamfered inner lip and the
vertical ribs. The primary judge held that these differences were more than slight
differences, which precluded the accused designs from being obvious imitations of the
Reg. Design.
The primary judge then dealt with fraudulent imitation and found that the author of
the accused designs, a Mr Rogers, “knowingly, consciously and deliberately based his
design on the plaintiff’s outlet director part which embodied [the Reg. Design]”. The
reasons for this conclusion included the facts that:

Mr Rogers had an outlet director part that embodied the Reg. Design;

the instructions to Mr Rogers were to design a product that looked like other
products in the market; and

there were substantial similarities between the designs produced by Mr Rogers
and the Reg. Design.
The primary judge then found that the accused designs were a fraudulent imitation of
the Reg. Design by applying a “not distinctly different” test, that is, that the accused
designs were not distinctly different because of the similarity between the shape and
configuration of the end parts of the blades and their receiving points. The primary
judge held that this feature of the Reg. Design had been copied.
The Appeal Court stated:
“The key points of application of principle to be decided are:

whether, in a determination of fraudulent imitation, it is necessary to make an
express finding not only of deliberate copying but also that the insubstantial
differences were present, or absent, in order to disguise the copying;

whether it is correct to make a finding of fraudulent imitation where
differences that had been held to be not insubstantial for the purposes of
obvious imitation were considered to be insignificant for the purposes of
fraudulent imitation;

whether it is correct to make a finding of imitation where differences that were
the very features that were found to make the Design distinctive over the prior
art were absent in the allegedly infringing products;”
Their Honours then reasoned that the primary judge, in concluding that the shape and
configuration [of the Reg. Design and the accused designs] were not distinctly
different, characterised as not distinctly different differences previously held to be not
insubstantial for the purposes of obvious imitation and did not consider the effect of
the omission of two of the three features held to give the Reg. Design its novelty. The
primary judge should have found that there was no imitation in the circumstances.
Also there was no evidence from the author of the accused designs (Mr Rogers) that
the differences between the accused designs and the Reg. Design were adopted in
order to disguise that one was otherwise a copy of the other. Indeed, such a finding
was not open in light of other evidence of the starting point for the accused designs.
The Appellant (K-Aire) satisfied the onus of proving an absence of copying. In the
absence of a finding that the differences between the two designs were made “merely
to disguise the copying” (that is, the imitation), the pre-requisites for fraudulent
imitation were not established. The primary judge erroneously applied the law and
thus his finding of fraudulent imitation could not stand.
For fraudulent imitation, it is necessary to make each of the findings of an intention to
copy, differences made in order to disguise the copying and a resulting product that is
in fact a copy or imitation.
The Appeal was upheld.
MacPhee v Peters Foods Australia Pty Limited (in liquidation) [2003] FCA 1528
(19 December 2003)
This case in the Federal Court of Australia before a single judge (Hill J) involved a
cross-claim by Peters Foods, seeking rectification of the register under the Designs
Act 1906, by the expungement of MacPhee’s registered design No. 136756. The
cross-claim was in answer to MacPhee’s action for infringement, which was
abandoned during the case. Otherwise the case primarily concerned actions under the
Trade Practices Act 1974 for misleading or deceptive conduct, and passing-off.
The article in respect of which the design was registered was stated to be
“cheesecake”. The Statement of Monopoly was in the following terms:
‘… the features of shape and configuration of a cheesecake … the features of
pattern and ornamentation of the waffle pattern on the lower portion and the
decorative sprinkles on top are to be disregarded.’
The shape depicted was a cone shape with a flat top.
MacPhee challenged the standing of Peters Foods to bring the cross-claim. Section
39(1)(b) of the Designs Act requires that an application for expungement of the
registration be by “any person aggrieved”. MacPhee argued that Peters Foods was not
a person aggrieved because it did not manufacture or market articles in respect of
which the Design was registered. Indeed, Peters Foods was a manufacturer or
marketer of ice-creams, not cheesecakes, that is, it was argued Peters Foods neither
manufactured nor dealt in the same class of goods to which the registered design
applied.
The judge adopted an interpretation by McLelland J applied to corresponding
provisions of the Trade Marks Act 1995 in The Ritz Hotel Ltd v. Charles of the Ritz
Ltd (1988) 12 IPR 417 at 454, viz:
‘… the expression would embrace any person having a real interest in having
the register rectified …and thus would include any person who would be, or in
respect of whom there is a reasonable possibility of his being, appreciably
disadvantaged in a legal or practical sense by the register remaining
unrectified…’
The judge observed that if the above test is adopted “then it can be said that at the
time the cross-claim was brought, it being at that time the case that Peters Foods was
the respondent in proceedings for infringement of the registered design, the action of
infringement itself “appreciably disadvantaged” Peters Foods in a “legal or practical
sense” if the entry in the register was not expunged.”
The judge held that MacPhee’s submission that Peters Foods was not a person
aggrieved must fail. He stated:
“I think that the submission made on behalf of Mr MacPhee must fail. Section
32 specifically empowers a respondent in proceedings for infringement to
counter claim for rectification of the register by the expunging of the entry of
the registration of the design. It impliedly confers upon the Court jurisdiction
to hear the counter claim which the section authorises. Two possible, and
perhaps alternative, propositions then follow. The first is that the standing
required for the bringing of an application for rectification of the register
under s 39 has no application at all to a case where there is a cross claim
brought under s 32. The second is that the situation of a person who is the
respondent in proceedings for infringement either without more suffices to
satisfy the precondition that such a respondent is a person aggrieved within s
39 or factually such a person who is a respondent will be appreciably
disadvantaged in a legal if not practical sense so that the person will be
‘aggrieved’ and in consequence the prerequisite to jurisdiction will be
satisfied. It matters not which of these propositions is correct.”
On the question of rectification of the register, section 17(1) of the Designs Act
provides:
17(1) Subject to this Act, a design shall not be registered unless it is a new or
original design and, in particular, shall not be registered in respect of an
article if the design:
(a)
differs only in immaterial details or in features commonly used in the
relevant trade from a design that, before the priority date in respect of
the application for registration, was registered, published or used in
Australia in respect of the same article; or
(b)
is an obvious adaptation of a design that, before the priority date in
respect of an application for registration, was registered, published or
used in Australia in respect of any other article.
The judge held that the registered design did not contravene section 17(1)(a) because,
on the evidence, there was no cheesecake that, as at the priority date, had the same
design. However he held that the registered design contravened section 17(1)(b)
because it was “an obvious adaptation of the design of ice-cream cones in use many
years before the priority date.” He stated:
“It may be accepted, as counsel for Mr MacPhee submitted, that ice-cream and
cheesecake are distinct and recognisable food products distinguishable from
each other. Their texture and flavour are, no doubt, different. But what is
important here is the shape. The cone shape with a flat top is a shape that
many manufacturers of ice cream and other cold confectionary products have
used in the past. Judged by the eye the design has the same features of shape
as are applicable to ice-creams sold in a wafer cone. The registered design is
neither ‘substantially novel’ nor ‘substantially original’ having regard to the
nature and character of the subject matter to which it is applied… It is an
obvious adaptation. There is no new conception …and it lacks the required
novelty that is a prerequisite of registrability.”
The judge went further (seemingly unnecessarily) and dealt with the question of
whether the registered design conferred a monopoly in a method or principle of
construction and was therefore unregistrable under the Designs Act. He held:
“The present is a case where the placing of cheesecake into a cone produces
general characteristics of shape and configuration which are necessitated by
the method or principle of construction … The difference between shape and
method of construction was usefully defined by Parker J in Pugh v Riley Cycle
Ltd [1912] 1 Ch 613 at 619-620:
‘The difficulty arises where the conception thus arrived at is not a definite
conception as to shape or configuration, but a conception only as to some
general characteristic of shape or configuration necessitated by the mode or
principle of construction, the definite shape or configuration being,
consistently with such mode or principle of construction, capable of variation
within wide limits. To allow the registration of conception of such general
characteristic of shape or configuration might well be equivalent to allowing
the registration of a conception relating to the mode or principle of
construction.’
The judge allowed the cross claim and directed that the register be rectified by
expunging the entry for design No. 136756.
Raymond John Brodie v Trevor William Wood and Geoffrey David Wood [2004]
APO 1 (11 February 2004).
This was a decision of a delegate of the Registrar of Designs on an application by the
Woods to extend the period of registration of registered design No. 145220 and a
notice by Brodie against the registered design (under section 27A(4) of the Designs
Act 1906) alleging it was not new or original.
The decision is illustrative of the distinction between a design being applicable to
features of shape or configuration of an article and a function of the article.
The registered design was applicable to a gully pit top for storm water drainage. The
Statement of Monopoly read:
“Monopoly is claimed in the shape and/or configuration of a gulley pit top for
storm water drainage with removable/replaceable roof section as illustrated
in the accompanying representation.”
The Woods claimed novelty in respect of the shape and configuration of the
removable roof section shown in the representations which portrayed an exploded
view and an assembled view of an article bearing the design.
The delegate compared the registered design against a prior registered design of Mr
Brodie (No. 123218) and held that some minor differences between them were
immaterial details. In relation to the “removable roof” of the registered design, the
Woods submitted it “facilitated many operations where access is important including
installation, repairs, cleaning, and more recently, the installation of in-line pollutant
filters which cannot be fitted to [a prior known design] due to restricted access.”
The delegate noted that “mechanical advantage is irrelevant to the newness or
originality of a design …” and stated:
“The capacity to remove the roof is readily apparent from the exploded view,
but apart from a line extending between the roof and the body of the manhole
chamber section there is no visible indication in the assembled view of
whether the roof is integral with or separate to the manhole chamber section.
However, when account is taken of the true nature of a design, the monopoly
conferred by registration does not in the present case extend to the
removability of the roof. Rather, and as set by the statement of monopoly, the
only features of the registered design that are susceptible to protection are the
particular idea of shape and configuration conveyed to the mind by the eye.
The removability of the roof is clearly a feature which does not of itself
convey that idea. In fact it seems to me that this feature of the roof is
tantamount to a mode of construction which the Act expressly prohibits from
design protection. …, the roof shown in the representation is essentially
identical to the roof of design 123218 and, consequently, I find that it does not
serve to distinguish the appearance of the registered design.”
In coming to this decision, the delegate referred to a statement by the High Court in
Firmagroup Australia Pty Ltd v Bryne & Davidson Doors (Vic) Pty Ltd 9 IPR 353 at
355:
“When a design satisfies the statutory definition of “design” by reason of its
applicability “to the purpose of … shape, or configuration, of an article”, the
monopoly conferred by registration does not extend to the features of the
design which do not determine the article’s unique shape or configuration,
and this is so although the design may be applied to make a new and useful
article. The Act is concerned with shape and configuration, not function.”
The delegate refused to extend the period of registration of the design No. 145220.
DESIGN STATISTICS
July 2003 – June 2004
Design Applications Lodged:
Design Applications Withdrawn:
Designs Registered:
Design Registrations Ceased:
5056
37
3639
2977
HONG KONG
By Peggy Cheung
Relevant Laws & Regulations
Registered Designs Ordinance (Cap. 522) of 1997
Registered Designs Rules of 1997
Registered Designs Rules
Amended by the Registered Designs (Amendment) Rules 2004
Electronic Filing and Processing of Applications for Registered Designs
“Digital Signature”
“Electronic Record”
“Electronic Signature”
“Information System”
Revised Forms for Designs
IPD Circular No.1 of 2004 dated 7 May 2004
Minor cosmetic amendments to the existing forms
Effective from 7 May 2004
Statistics and Performance
– April 2003 to May 2004
Number of designs filed / registered during April 2003 - May 2004
Recent Decision
SUN SHUN FUK FOODS CO LTD v TRIPLE NOODLE & FOOD CO LTD [2004]
HKEC 352
(Court of First Instance Action No.2299 of 2003)
Facts of the Case :
Plaintiff had been selling noodles since 1960
In 2001, the Plaintiff decided to launch a series of new packaging bags for one line of
their products called “Noodle King” to make the outlook more attractive
The Plaintiff instructed an advertising company to design the new packaging
The new packaging was subsequently registered with the Designs Registry (7
September 2001)
In December 2001, Defendant put a series of noodles, also called “Noodle King” in
their sales outlets in Hong Kong
Plaintiff complained that the design of the Defendant’s packaging bags is virtually
identical to the Plaintiff’s registered design
In June 2003, Plaintiff applied for an interim injunction, restraining the Defendant
from copying, using, advertising, manufacturing or transmitting orders for / dealing
in any designs confusingly similar to the Plaintiff’s registered design
Court of First Instance Ruling
Apply test in American Cyanamid v Ethicon Ltd [1975] 2 WLR 316 :
The court rejected Defendant’s argument
INDIA
By Guru Nataraj
There have been no changes – legislative or administrative, since we last
presented our report at the APAA Council Meeting in 2003 at Kota Kinabalu. To
briefly recapitulate, the Designs Act 2000, which came into force on May 11, 2001
brought about significant changes in the design system in India.
1. NOVELTY: Under the earlier legislation of 1911, anticipation, whether raised in
a proceeding for cancellation or by the Patent & Design Office, was gauged only
on the basis of prior publication or prior registration of a design in India. As will
be evident, this enabled unscrupulous third parties to obtain design registrations in
their names in India in respect of products belonging to others but which had not
been sold/ published/ registered in India. The Designs Act 2000 (the "Act") now
follows a global standard for novelty. The Act provides that prior publication of a
design anywhere in the world destroys the novelty thereof. This ground of lack of
novelty based on prior publication anywhere in the world can be used both in
cancellation proceedings against a registered design as well as by the Patent &
Design Office during examination of an application.
2. Another important feature introduced in the Designs Act 2000 is that a
composition of lines or colours when applied to an article, whether in twodimensional or three-dimensional form would also be a good subject matter for
registration.
3. The Act now provides that designs which are not significantly distinguishable
from known designs or combination of known designs, or which contain obscene
matter are not registrable.
4. A design registration has an initial term of 10 years from the date of filing, which
can be extended by another period of five years. The extension can be obtained as
matter of right.
5. A registered design is now open to the public immediately upon registration. The
procedure for cancellation has been considerably simplified.
6. A design registration, which has lapsed can now be restored provided an
application for restoration is filed within one year from the date of lapse.
7. Priority can be claimed under the Paris Convention provided the Indian
application is filed within six months from the date of filing of the earliest
convention application.
8. Although, the Design Office is located Calcutta, it now possible to file an
application for registration of in other jurisdictions as well, i.e., Delhi, Mumbai
and Chennai without the loss of filing date or priority date.
There have been several cases in various High Courts relating to infringement
and/or cancellation of designs. However, in most cases, no significant new
perspectives or interpretations have been added as judicial doctrine. The High Courts
have followed established precedents. In a recent decision (Glaxo Smithkline
Consumer Healthcare GmbH & Co. vs. Anchor Health & Beauty Care Pvt. Ltd.),
following well known principles of prior publication, the High Court of Delhi held a
design registration of Glaxo Smithkline Consumer Healthcare GmbH & Co. to be
invalid. In this case, Glaxo Smithkline had obtained multiple registrations for
variations of the same design for a toothbrush. It then filed suit for infringement
against the defendant alleging that the Defendant's toothbrush while not identical
constituted a variation of its design and therefore, was a substantial infringement. The
High Court of Delhi vacated an interim injunction originally granted to the plaintiff
and held that it was not open to a plaintiff to obtain multiple registrations for
variations of a design and at the same time allege infringement by a third party,
which had adopted another variation of the subject design. In fact, it held that the
"new "design" being nothing but inconsequential variation of the previous design,
lacked in novelty and originality.
The Designs Act 2000 now in force in India has resulted in easing of
procedure for registration. Thus, design registrations still continue to form one of the
easier methods of securing Intellectual Property Protection in India. The time between
filing of an application to registration is much less compared to other forms of
Intellectual property protection such as Patents and Trademarks. Renewals of designs
have been made easier. While the official Government fees have been increased
multifold as compared to the fees under the Designs Act 1911, the net cost to the
applicant is still significantly less than other forms of Intellectual Property Protection.
INDONESIA
By George Widjojo & Rahajeng Handayani

LEGISLATIVE DEVELOPMENT
Since our last report there have been no major legislative developments except the
issuance of a Technical Guidance by the Director of Indonesian Design Office on
February 3, 2004. This Technical Guidance was intended to assist and to give a
fundamental guidance for Industrial Design examiners in conducting their task in
examining Industrial Design applications.
The main features of this Technical Guidance are highlighted as follows :
A. Preliminary Examination on Industrial Design, which consisting of :
1. Physical examination on the physical sample or drawing or photograph
and the description of the Industrial Design being applied for registration;
2. Examination on distinctiveness and unity for one Industrial Design or
several Industrial Designs
3. Designs Classification, i.e. Locarno Classification, Heading Class and
Secondary Class, Classifying and determining into Heading Class and
Secondary Class.
4. Examination relating to the prevailing laws and regulation, public order,
religion morality.
B. Investigation on Industrial Design
1. Introduction
2. Investigation Subjects and Materials on Registered Industrial Design,
Industrial Design Application and Public Announcement
3. Investigation Steps, i.e. : Investigation to the selecting class, Investigation
to the Registered Industrial Design, Investigation to the Industrial Design
Application and Investigation to the Public Announcement.
C. Substantive Examination on Industrial Design.
1. Introduction
2. Legal Basis
3. Definition of Industrial Design
4. Similarity on Industrial Design
5. Novelty Examination by Industrial Design Examiners
6. Possibility to apply an Industrial Design Application under First to File
Principle based on advanced interpretation on Regulation of Design
Requirements.
7. Relation to other parties in connection with Copyright and Industrial
Design Right.
8. Examination Report and Acceptance Notification Letter.
Further, this Technical Guidance will be continually modified and corrected along
with the development in national regulation on industrial design.

REPORTED CASES OF INDUSTRIAL DESIGN IN INDONESIA
Trademark Law or Industrial Design Law ?
Ambiguity in giving a proper legal protection against three-dimensional
marks.
On May, 2003, Levi Strauss & Co and Société des Produits Nestlé S.A., filed
the design of stitch, pocket and cup (see the sample pictures) as trademark
applications.
The Indonesian Trademark Law No.15 of 2001 is not familiar with threedimensional marks which function as an industrial design. According to
Article 1 of Trademark Law No. 15 of 2001, a Mark is defined as a sign in
the form of a picture, name, word, letter, figures, compositions of colors, or a
combination of said elements, having distinguishing features and used in the
activities of trade in goods or services.
In view of the above, the relating applications of stitch design, pocket design
and cup design as trademarks are inappropriate since they are non compliance
with the definition of trademark as mentioned in Law No. 15 of 2001 on
Trademark. The said relating applications are advisable to be filed under Law
No. 31 of 2000 on Industrial Design, stating that an Industrial Design shall
mean a creation on the shape, configuration or the composition of lines or
colors, or lines and colors, or the combination thereof in a three or two
dimensional form which gives aesthetic impression and can be realized in a
three or two dimensional pattern and is used to produce a product, goods or
an industrial commodity and a handy craft.
During the preliminary examination step, the trademark examiners of the
related applications were not quite focus of this improperness which is
obviously lack of distinctiveness and was not in accordance with Article 5 of
Trademark Law No. 15 of 2001 that a mark shall not be registered if it
contains one of the following elements:
a. Contradicting with the prevailing rules and regulation, morality of
religion or public order
b. Having no distinguishing features;
c. Having become public property or
d. Constituting information or related to the goods or services for which
registration is requested.
And as a result, the related applications had exceeded the 3-months public
announcement period and fortunately none of oppositions were filed by any
third parties. Theoretically, if no oppositions were filed by any third party
during its public announcement period, they will be granted certificates of
registration.
Should the Trademark Office issues trademark certificates of registration for
the indistinctive design applications, it proves that the Trademark Office
implicitly accepts application for a three dimensional mark, which is not
regulated under Trademark Law No. 15 of 2001.
Levis Strauss & Co.
Class of goods: 18 and 25
Levis Strauss & Co.
Class of goods: 18 and 25
Levis Strauss & Co.
Class of goods: 18 and 25
Societe des Produits
Nestle S.A
Class of goods : 30
Information on Statistic of Industrial Design Application is as follows :
FILED
TOTAL
YEAR
DOMESTIC
FOREIGN
2001
2002
2003
2004
(Jan-July)
1,092
2,496
2,791
311
372
363
1,403
2,868
3,154
2,313
278
2,591
TOTAL
8,692
1,324
10,016
JAPAN
By Minako MIZUNO
1. New Service to Access an English-language Version of JPO’s Design Database
via the Internet.
On March 22, 2004, the Japan Patent Office (JPO) offered a design database
viewable online in English. People can access the database by entering the
registration number of a published registered design into a request form of the
English-language version of the IPDL Design Gazette Database. The form can be
accessed at URL:
http://www4.ipdl.jpo.go.jp/Isyou/dgde_top.ipdl?N0000=3100
You must fill two blanks in the form: [S] and [registration number (example,
“1083380”)]. Then, you can access the registered design.
Visitors can access and view any registered design previously published either in
the paper Gazettes or CD-ROM versions. However, at present the JPO English
translation of the bibliographic data and English headings cover only the registered
designs which have been published since January 11, 2000 in the CD-ROM version.
Data regarding the registered designs published in the Official Gazettes before
January 11, 2000 have not been translated into English yet.
2. “Intellectual Property Promotion Plan 2004” Decided at the Eighth Meeting of the
Intellectual Property Policy Headquarters on May 27, 2004.
Further to the last report on October 19, 2003, regarding the Japanese
Government’s activities on its Intellectual Property Policy, the “Intellectual Property
Promotion Plan 2004” was promulgated at the meeting of the Intellectual Property
Policy Headquarters held on May 27, 2004.
On June 22, 2004, Mr. Hiroshi Ogawa succeeded Mr. Yasuo Imai as the new
Commissioner of the JPO. On the same date, in his inaugural address Mr. Ogawa
announced the JPO will promulgate the Promotion Plan as an important policy
statement.
Several items related to the design protection are included in the Promotion Plan:
Item 1:
Discussions will be held from April 2004 to March 2005 regarding the issue of
the modality of entire design protection system, with the aim of creating a report on
the appropriate method to achieve a better infrastructure producing more attractive
designs and higher-value products.
Item 2:
Promote cooperation between Asian countries in the field of design protection by
the dispatch of experts in this field, accepting Asian trainees, and providing search
reports on Japanese design applications to the Offices in Asian countries.
Item 3:
Strengthen the protection of designs or appearance of products in Japan.
Source:
http://www.kantei.go.jp/foreign/koizumiphoto/2004/05/27tizai_e.html
3. Statistics on Design applications Filed at the JPO
Some comments and statistics regarding design applications were posted on the
JPO website:
“1. The number of design applications has remained at around 40,000 in recent years.
2. Many design applications are associated with electrical or electronic machines or
instruments, communication machines or instruments, civil engineering instruments
or materials or house equipment or utensils, and this trend has remained unchanged in
recent years”
[Figure 2-1] Trend in the Number of Design Applications
Source: JPO Annual Report; Annual Report on Patent Administration
Source:
http://www.jpo.go.jp/shiryou_e/index.htm
It is estimated the total number of design applications filed in 2003 was 39,267.
Among these, the number of applications requesting registration of a design-in-part
was 8,060 (20.5%), and the number of applications requesting related design
registration was 6,734 (17.1%).
The number of applications for the registration of a design-in-part or a related
design both demonstrate an upward trend.
4. An Interesting Court Decision
[Introduction]
The Osaka District Court issued a decision to stop the defendant importing and
selling boards for a buggy type wheelbarrow under Article 37 of the Japanese Design
Law.
In the court, the defendant argued that the defendant’s board which is composed
of a board body, connectors (arms and arm holders) and casters, has not infringed the
plaintiff’s registered design which indicates only a board itself as an article (Issue
(2)).
Regarding the argument, the Court judged that the defendant’s board including
its accessories is considered to infringe the plaintiff’s registered design rights since
the board body of the defendant’s product appeared to be a material part on the basis
of the fact that the defendant dealt with and traded in the board body together with the
connectors (arms and arm holders) and casters since consumers purchase the board
with the accessories in order to assemble them by themselves.
[Case]
Osaka District Court Decision 2002(WA) No. 11150
Decided on November 13, 2003 (Case granted)
Conclusion:
1. The defendant cannot import, assign or offer for assignment of the board for
wheelbarrows.
2. The defendant shall dispose of the above-identified article.
3. The defendant shall pay to the plaintiff \28,227,920 with the interest calculated at
5% on each remaining unpaid amount starting November 14, 2004, to the ending
of the payment.
4. The defendant shall bear the expenses of the lawsuit.
5. Only the item 3 above of this decision may be executed provisionally.
[Outline of the Facts]
The plaintiff has obtained registration for a design for a board for a wheelbarrow,
Reg. Des. No. 1083380. The plaintiff entered a claim to the Court requesting an
injunction against the defendant from importing or selling the defendant’s board for a
wheelbarrow since the design of the defendant’s board is similar to the registered
design.
[Facts]
(a)
The plaintiff has obtained a design registration Reg. Des. No. 1083380.
According to the IPDL publication, the design application was based on a
claim from a previous Swedish application was filed at the JPO on February
22, 1999, which was registered on June 23, 2000, and published on August 28,
2000.
(b)
The defendant has imported boards for a wheelbarrow from China (PRC) and
sold them since March 2002.
[Issues]
(1)
Whether the defendant’s design is similar to the registered design?
(2)
What should be suspended as an injunction?
(3)
What is the damage to the plaintiff?
[Extended Abstract of the Court Decision]
The following abstract deals only with Issue (1). Issues (2) and (3) are omitted.
Issue: Whether the defendant’s design is similar to the registered design?
Consideration 1: Material part of the registered design
The board is for a wheelbarrow used for carrying two children at the same time;
one child is on a seat of a buggy type wheelbarrow and the other child is standing on
the board which is connected to frames at the rear of the wheelbarrow. The board in
the dispute is traded independently of the wheelbarrow main body. Main users or
purchasers of the board are parents who have to move with children. The users will
usually observe the board from the upper rear side and pay attention to the shape of
the board to see its texture or safeness for children when they buy it.
On the basis of the evidences cited in the Court, the registered design has new
structures of:(A) a rectangular shape with rounded edges and four rounded corners,
(B) the front side of the board has two cylindrical protrusions which connect to the
wheelbarrow body, and (C) two antiskid curve bulges are incorporated into the top
sides of the board.
Consequently, the new, attractive and material features of the registered design
reside in the whole shape of the board having a rectangular shape with rounded edges
and four rounded corners, and a concave portion at the center rear side and two
antiskid bulges which are incorporated into the top sides of the board.
Consideration 2:Similarity between the registered design and the defendant’s design
The Court found that both boards of the parties commonly have the same main
structure and the said main features. Therefore the Court judged that the defendant’s
design gives the same aesthetic impression as the registered design does.
The Court found that there are some differences between the registered design and the
defendant’s board: (i) the defendant’s antiskid curve bulges are semi-globular whereas
the bulges in the registered design are teardrop-shaped, and (ii) the defendant’s board
has a small dotted projections arranged in a oval area on its top whereas the registered
design has two rectangular areas on its top.
The Court judged that the said differences are considered immaterial since the
difference (i) cannot appeal to the observer’s attention, and (ii) does not constitute a
main feature since they are only one of other well-known features which are used for
nonskid purposes.
KOREA
By Jordan Y. Kim
1. What's new?
1) A bill for amendment of the Design Law was introduced to the National
Assembly.
(1) Change of legal term from "Eu-jang(意匠)" to "Design"
(2) Protection of Typeface
A new provision will be added to define the legal meaning of "article" wherein
typeface is to be included in the meaning of the "article". In the amendment, it is
newly provided that "an article means something that can be manufactured by
industrial meaning or handcraft and includes a set of typeface" in Art. 2-(1)-②.
This amendment is proposed according to the global trend to protect typeface under
the Design Protection System.
(3) Creativity requirements strengthened
Creativity requirements for design registration in Art. 5-(1)-(ii) is amended to "(ii)
the design was described in a publication distributed in the Republic of Korea or in
a foreign country before the filing of the design application; or designs published
through electric telecommunication lines." (the underlined part is newly added)
With this amendment, designs disclosed on the internet can be cited as bars against
design registration.
(4) Non-Substantial-Examination (NSE) System amended
A new subparagraph is introduced to Art. 26 to enable the examiner to examine
substantial matters of Non-Substantial Examination design application when there
is information related to substantial requirement furnished.
This amendment is to fix legal defects of current Law where it is impossible to
refuse an NSE design application in the course of formality examination even
though it is found to lack substantial requirements. Under the current Law, statutory
way to nullify the NSE registration is resorted only to opposition or invalidation
trial after registration.
(5) Schedule to Promulgation
The amendment is schedule to come into force from July in 2005 after the National
Assembly passes it in this year.
2) Paperless Examination System Launched in KIPO
KIPO has completely automated the examination of design applications, thereby
significantly shortening the examination period and enhancing the quality of
examinations. In the past, KIPO conducted documentary examinations mainly by
comparing design applications or registrations with clips of drawings (prior arts)
displayed on a folding screen. Under the new system, instead of folding screen,
each examiner has two 21-inch LCD monitors: one shows the designs of new
applications, while the other searches for and compares similar designs from the
design database having the 2.5 million designs. Supported by this new intelligent
system, completely automated paperless administration became possible in KIPO.
The technology for editing drawings also has been incorporated into the new
processing system. Examiners can accurately detect any error in the design
drawings and notify the applicants of the error. The editing device can also be used
for revision or correction, thus expediting the return of the corrected designs.
2. Statistics
1)
Application & Registration
2000
Application 33,841
Registration 18,845
2)
2001
2002
2003
36,867
18,650
37,587
27,235
37,606
28,236
Comparison of Domestic and Foreign Applications
Domestic
Foreign
Case
%
Case
2000
32,110 (33894) 94.9(95.0)
1,731(1784)
2001
35,074(36,657) 95.1(95.2)
1,793(1865)
2002
35,399(37,729) 94.2(94.4)
2,188(2223)
2003
34,991(36,686) 93.0(93.2)
2,615(2659)
* ( ): including multiple applications.
Increase
over2002
(%)
0.1
3.7
Total
%
5.1(5.0)
4.9(4.8)
5.8(5.6)
7.0(6.8)
33,841(35,678)
36,867(38,522)
37,587(39,952)
37,606(39,345)
3) Trial
2000
Domesti
c
468
Foreig
n
40
2001
Domesti
c
503
Foreig
n
26
2002
Domesti
c
513
Design
* Multiple applications were treated as single applications
Foreig
n
47
2003
Domesti
c
554
4) Time log
Design
2002
8.4
2003
7.3
(Months)
Shortened
△1.1
3. Cases
1) Scope of a Registered Design Right Publicly Known in Part
(Supreme Court Decision No. 2003Hu762 dated August 30, 3004)
【Decision】
When a registered design of a industrial goggle is publicly known in its general
configuration, pattern and front view but a magnified side view is particularly
appeared as core part of the design in the Design Registration Gazette, the analogy of
Foreig
n
50
two comparing designs should be determined in focus of configuration and pattern of
the holder and connector at the side of the goggle.
【Ground for Decision】
In determining the scope of a registered design, any part of the design already known
to the public should be given less significance. Therefore, a design in question will be
deemed not to fall within the scope of a registered design when both are commonly
having already publicly known part but the rest of the both designs are not analogous.
2) Meaning of “Article” and its criteria for design registration
(Supreme Court Decision 2003Hu274 dated July 9, 2004)
【Decision】
The “article” in the Design Law Art. 2-(1) means an independent and tangible asset
that can be subject to independent trade. If it is a part, compatibility is further
required. Here, the compatibility does not necessarily mean to be subject to actual
trade and compatible with other article but possibility of trade with compatibility is
good enough to be registered as a design.
According to the Art. 5-(1) which provides that “a design able to be used for industrial
purpose” can be registered and Art 2-(1) which defines that “Design” is shape, pattern
and color or combination of these in an article, shape, pattern or color or combination
thereof of the a thing which does not fall within independent tangible asset can not be
a design registrable in the Art. 5-(1).
MALASIA
BY TEO BONG KWANG
LEGISLATIVE CHANGES
There has been no significant legislative change to the industrial designs law of
Malaysia.
REPORTED CASE LAW
There is no reported decision on industrial design law for the period surveyed i.e.
from October 2003 to October 2004.
UNREPORTED CASE LAW
Lee Chong Yee and 2 others v Kumpulan Guthrie Bhd
Kuala Lumpur High Court Civil Suit No. D4-22-299-94
The Plaintiffs were joint proprietors of a United Kingdom registered design No.
1054433 for a Gutter Forming Panel. The registered design consists of the following
shapes:
According to the statement of novelty, the alleged novelty resides in the shape or
configuration of the rain gutter.
The Gutter Forming Panel is in fact a device generally known as a rain gutter. It was a
piece of crescent shaped material made of either rubber or bitumen or plastic which
was attached to the trunk of the rubber trees to prevent the tapping channels of rubber
trees from getting wet by rain water.
When fixed to the tree it formed a spiral shaped-hood which prevented the tapped
section of the trunk from getting wet.
The Plaintiffs alleged that the defendant, Kumpulan Guthrie Bhd a public listed
company with a long history of owning and managing rubber estates in Malaysia had
since 1989 infringed their design by using a similarly shaped rain gutter known as
“Chemara Disposable Rainguard”. They sought damages amounting to RM5 million,
loss of royalty and costs.
Guthrie’s raised, among others, the following defences:

that the design was not new or valid as it was anticipated by at least two UK
granted patents.

that the Chemara Disposable Rainguard was a result of independent research
and creation since 1978.

the shape or configuration of the Plaintiff’s Gutter Forming Panel utter was
dictated by its function i.e. it had to fit snugly around a tree trunk, hence it had
to have a crescent shape.

the design lacked eye-appeal as it had no aesthetic embellishment.
After a protracted trial, the Court on 21 July 2004 ruled in favour of the Defendant
principally on the ground that the shape of the registered design was common to the
trade and it was not novel. Further, the Court found that Guthrie had succeeded in
establishing the defence of prior or independent creation.
Guthrie also obtained a declaration that no rights and/or privileges have been acquired
by the Plaintiffs under the UK Registered Design in Malaysia. The court also
awarded costs to Guthrie.
NEW ZEALAND
by Philip Thoreau
Designs Act 1953
No legislative changes have been made to the Designs Act 1953 and currently no
proposed changes have been put forward in the last year.
However, it seems likely that the Designs Act 1953 will undergo review in the
foreseeable future due to the current comprehensive update of intellectual property
legislation in New Zealand. The new Trade Marks Act 2002 came into force last
year and the Patents Act 1953 is currently undergoing review.
Examination of Design Applications
In Permanent Promotions Pty Limited v Independent Liquor (NZ) Limited the
Commissioner's examination of Permanent Promotions’ design application was
observed as falling short of proper standards. The Commissioner was requested to
appear at the substantive hearing.
The examination of design applications is now to be undertaken by Patent examiners
at the Intellectual Property Office. This change will come into effect in the next 2-3
months.
Design Cases
Permanent Promotions Pty Limited v Independent Liquor (NZ) Limited [9 June
2004]
The High Court granted an interim injunction restraining the defendant, Independent
Liquor (NZ) Limited (“Independent Liquor”) from selling, distributing, advertising
or otherwise promoting their “Vodka Twistee” shot glass products or any other
article to which the plaintiffs, Permanent Promotions Pty Limited (Permanent
Promotions), registered design had been applied or a design not substantially
different from that registered design.
Permanent Promotions was the proprietor of New Zealand registered design 403797.
The product in question was a shot glass with a helically twisted longitudinally
orientated divider and a sealed top. The shot glass was designed to enable two
different alcoholic beverages to be seen and drunk together (mixing in the mouth),
without the prospect of those beverages mixing in the shot glass. Representations of
the final article are attached for reference.
The Issues
(a) What is the effect of the sections of the Act which provide for the Register
of Designs to be prima facie evidence of certain matters?
The Court held that the scheme of the Act is clear in that the Commissioner is
appointed to examine designs which are submitted and in the course of that
examination the Commissioner determines questions of novelty and compliance
with statutory definitions. The Court stated that the Register is prima facie
evidence of the fact that the Commissioner has found a design to comply with the
definition of “design” contained in the Act and has found the requisite degree of
novelty on the basis that no item can be registered unless these conclusions have
been drawn.
Evidence was put forward on the behalf of the defendant which suggested that the
examination of the design application undertaken by the Commissioner was on this
occasion short of what is required by the scheme of the Act. While the Court stated
that there was much to be said for this view on the basis of the evidence put forward,
the Court was not prepared to make any findings in this regard as the Commissioner
had not been heard on the matter.
(b)
Was Permanent Promotions’ registered design capable of registered
protection under the Act on the Interlego test?
The definition of “design” under consideration in Interlego AG v Tyco Industries Inc
[1989] 1 AC 217 was contained in s1(3) of the Registered Designs Act 1949 (UK)
and is in all material respects identical to the definition of “design” in the New
Zealand Designs Act.
In Interlego the UK Privy Council stated that a design which has eye appeal will be
excluded from registration only if every feature of it is dictated solely by function.
In the present case, on behalf of the defendant it was argued that the exclusion
from the expression “design” takes effect when the function which the article to
be made in that design has to perform requires that the article be made in that
shape, even if the same function could equally well be performed by an article of
a different shape. That is, the relevant features of the shape were brought about
only by, or are attributable only to, the function which the article in that shape is
to perform, even if the same function could be performed just as well by an
article of a different shape.
The Court stated that while the defendant had presented a strong argument that may
well prevail on the question whether the design actually registered was capable of
registration by the Commissioner for the reason that it fell within the “solely
functional” exclusion contained in the definition of “design”, the argument did not go
far enough given the Court's conclusion on the question of what the Register of
Designs is prima facie evidence.
(c)
Was the product that Independent Liquor proposed to market and sell
in New Zealand sufficiently similar to Permanent Promotions’
registered design?
The Court determined that this was a substantive issue which must be decided at
full trial. Bruce Sutton and Anor v Bay Masonry Limited and Anor [28 May
2004]
The High Court upheld the defendant's, Bay Masonry Limited, counterclaim for
deletion of the plaintiffs, Mr and Mrs Sutton, registered design of their Z-post.
Background
Mr and Mrs Sutton were the proprietors of New Zealand Registered Design No.
401356 for a Z-post. The accompanying diagrams showed 3 members of equal length
joined in a squared-off Z shape with members attached at right angles.
Mr and Mrs Sutton were manufacturers and wholesalers of fencing equipment
and are fencing contractors. The defendant was also a manufacturer and
supplier of fences, cladding systems and landscaping equipment, including its
Z-posts.
Mr and Mrs Sutton asserted that Bay Masonry manufactured or sold posts in
which their design or a design not substantially different had been used. The
defendants counterclaimed and challenged the validity of the design and applied
to the Court for rectification by removal of the entry on the Register.
The grounds for the defendants’ counterclaim were:
(i) the design was invalid because the design applied to an article which did
not appeal to or was judged by eye; its shape and configuration was
dictated by function and hence it fell outside the definition of
“design”;
(ii) the shape in the design was neither new nor
original. Law
A registered design must have at least one of the elements of shape, configuration,
pattern or ornament. It must be applied to an article by an industrial process or
means, have “eye appeal”, not be purely functional and not relate to a method or
principle of construction. The elements or the article as a whole must be “new or
original”.
Issues
(a)
Had the defendant demonstrated that the Z-post lacks shape,
configuration, pattern and ornament applied to an article by
industrial process or means?
Evidence was put forward which suggests that metal is often folded into a shape such
as the Z-post. Accordingly the appropriate conclusion was that although unpatterned
and unornamented, the Z-post is a shape or configuration. The Court presumed that it
achieved its shape or configuration by an industrial process or means applied to an
article, being its original material. As a result, the defendant failed to show that the
design should not have been registered on this ground.
(b)
Did the Z-post appeal to the eye’s judgment, was its shape
dictated by its function and was it new or original?
The difficulty in this case was that no party put a Z-post (or a photograph) in
evidence, none of the diagrams detailed dimensions or thicknesses and no part of the
design gave any indication of the materials of manufacture, usage or packaging. The
only indication of function was in the use of the word “post” in the name.
On the assumption that the Z-post was a fence post and that it was marketed through
outlets or in other ways visited by fencing contractors or other traders involved in the
building industry, the Court had to determine whether the appeal lay more in its shape
or its usefulness.
Little evidence on this issue was put before the Court. The Court stated that the shape
of the Z-post appeared to be only what is functionally needed or only what is there to
“make the article work”. Accordingly, the Court concluded that the Z-post did not
appeal to the eye and hence the design should not have been registered.
On the issue of whether the Z-post’s shape was solely dictated by its function the
Court said that it appeared that the Z-post was used to butt up in the same line
members forming part of the item being constructed. While other shapes such as an H,
T and L shape could achieve the same result, the Z-post’s shape appeared to be
dictated solely by the function of the task for which it was made.
On the issue of whether the Z-post was new or original, on the basis of the evidence
before the Court that Z-shaped aluminium extrusions had been widely available over
the years the Court stated that the Z-post must not be substantially new or
substantially original.
The evidence established that aluminium extrusions featuring right angle Z shapes
were known and used before the application date and that metalworkers have bent
metal into that shape for many years before the application date. Consequently, the Z
shape, per se, was no more than a trade variant and should not have been registered.
Conclusion
New Zealand’s economy continues to be strong, underpinned by a stronger currency
relative to its trading partners and good commodity prices worldwide and developing
economies in its important export markets.
Imports from overseas are also at record levels indicating opportunities for exporters
in overseas countries have been taken up as will be seen from the examples noted
above. Intellectual Property rights continue to be judicially supported leading also to
strong deterrent value in Intellectual Property rights in New Zealand.
PHILIPPINES
by C. RISEL G. CASTILLO-TALEON and
ONOFRE A. FRANCISCO, JR.
RECENT DEVELOPMENTS
A. Developments in Philippine Legislation and/or Jurisprudence concerning
Design Protection
On January 7, 2004, the Intellectual Property Office of the Philippines issued
Office Order No. 02, Series of 2004, mandating the registrant of an industrial design
or layout design (topography of integrated circuits) to give notice that the same is
registered by displaying on the registered product, or on the container or packaging
thereof, or on the advertising materials relating thereto, the words “Reg. IPOPHIL”.
DATA ON DESIGN APPLICATIONS FILED AND GRANTED
Design Applications filed in 2003
Local - 667
Foreign- 343
Total - 1010
Design Applications filed from January 1 to August 18, 2004
Local - 293
Foreign- 239
Total - 672
Design Patents Granted in 2003
Under RA 165
Under IP Code
Foreign
64
480
Local
34
436
Total
96
786
Design Patent Granted from January 1 to August 18, 2004
Under RA 165
Under IP Code
Foreign
29
262
Local
4
359
Total
13
287
The areas or fields of technology covered by most of the industrial
applications are indicated below:
AREA OR FIELD OF TECHNOLOGY/KIND
OF MACHINES OR INSTRUMENTS
YEAR FILED
2003
Food stuff
Clothing, travel, goods (bags) etc.
Brushware
Textile
Household good, dinnerware, spoon, fork, etc.
Furniture
Tools and hardware
Ornamental or adornment/trophy, figurine,
photograph, Cinematic camera
Packages, container
Clocks, watches, measuring instrument
Transportation
Electrical, communication, telephone, lightings
Machines, devices against fire accident and other
hazard warning devices
Office and school supplies
Sales and advertising equipment
Games, toys
Musical instrument
Arms, pyrotechnic
Sanitary pipes, fluid distribution
Medical and lab, medical supplies, feeding bottles,
pharmaceutical
Building and construction
Appliances for preparing foods and drinks, ref,
oven
Miscellaneous
TOTAL
2004
6
41
14
189
32
59
11
45
7
15
6
5
12
24
24
11
121
16
88
60
21
135
10
101
38
3
13
10
11
0
0
5
41
15
2
15
7
0
7
80
99
10
50
13
118
1010
92
672
STATISTICS ON INTER PARTES CASES INVOLVING INDUSTRIAL
DESIGN.
For the year 2004, only seven (7) petitions for cancellation against industrial
design registrations have been filed before the Bureau of Legal Affairs of the
Intellectual Property Office (IPO). The industrial design registration subjected to the
cancellation action cover crates and container.
SINGAPORE
by Yew Woon Chooi & Audrey Yap
LEGISLATIVE DEVELOPMENTS
Pursuant to the Intellectual Property (Miscellaneous Amendments) Act 2004,
Section 38(4) of the Registered Designs Act (Cap. 266) was amended to allow
exclusive licensees of a registered design to bring infringement proceedings
against a third party without having to join the owner(s) to the proceedings.
This amendment was to give effect to Article 16.9.7 of the US-Singapore Free
Trade Agreement.
Impending Development
The Registered Designs Act will also be amended to allow for international
registration of industrial designs following Singapore’s impending accession to the
Hague Agreement concerning the International Registration of Industrial Designs by 1
January 2005. This helps to simplify the process of obtaining design protection in
overseas markets as applicants who need only file a single application with one office,
in one language and pay a single set of fees in one currency. This therefore helps to
save costs. Currently, separate applications must be filed in each individual country’s
national registration office if protection is desired in several countries.
Case Law
There is no reported case law regarding Registered Designs within the last year.
Conclusion
The status of the registered designs law in Singapore remains largely unchanged.
SRI LANKA
by Surani Wickramaratna
The provisions relating to Industrial Designs in Sri Lanka have been expanded
under the recently passed Intellectual Property Act No.36 of 2003.
Requirements for registration of an Industrial Design
As provided in Section 29 of the Act for an industrial design to be registered it
should be i.
A new industrial design
A new industrial design means a design which had not been made available to the
public anywhere in the world or at any time whatsoever through description, use
or in any other manner before the date of the application for registration of such
design or before the priority date which is validly claimed.
ii.
Not one which consists of any scandalous design or is contrary
to morality or public order or public interest or which, in the opinion of the
Director-General or of any Court to which such matter has been referred to is
likely to offend the religious or racial susceptibilities of any community in Sri
Lanka.
Requirements of an Application
1.
The following documents and information, are required for filing a design
application in Sri Lanka.
1)
Details of the applicant
2) Full Name (If the applicant is a body corporate the kind of incorporation
must be stated)
3) Address
4) Description (ie: the full trade or business description)
5) Five (05) specimens of the design
6)
The kind of products for which the industrial design is to be used.
7)
A declaration by the applicant that the industrial design is new to the best
of his knowledge
8)
If priority is claimed, a certified copy of the Convention application
9)
Power of Attorney
10)
Where the applicant is not the Creator of the Industrial design;
i)
Name and address of the Creator
ii) Duly signed request by the Creator that he be mentioned as such in
the registration.
iii) Statement of Justification by the applicant as to his right to obtain
registration ie. whether the applicant is the legal representative/ assignee
of the Creator, or the applicant is the owner of the creation which was
made while the Creator was in the employment of the applicant or by the
Creator in the performance of the contract for the execution of work etc.
2.
The applicant can claim priority from an earlier application filed in a
convention country within six (06) months from the date of such earlier
application. The date, number, name of applicant and the country where the
application was filed should be provided along with a certified copy of such
earlier application.
Search
Although the Registry does not carry out a substantive search provision is made
under the recent Act for the Director-General to carry out a search relating to the
novelty of the design prior to accepting the design for registration. Section 40
specifies that if the relevant documents/ information have been provided the
Director-General shall examine the design in relation to Section 29 and if the
design is not registrable in terms of Section 29 the Director-General should notify
the application stating the grounds for refusal of registration. There is provision
for written submissions to be filed in respect of such refusal and an inquiry to be
held at the Registry where necessary.
Duration of Registration
Registration of an industrial design is effective for a period of five (05) years
from the date of filing the application & is renewable thereafter for two
consecutive periods of five (05) years each.
Rights of a Registered Owner
The owner of a registered design has the following exclusive rights in relation to
such design:
a) To reproduce and embody such industrial design in making a
product;
b)
To import, offer for sale, sell or use a product embodying such
Industrial design;
c)
To stock for the purpose of offering for sale, selling or using, a
product embodying such industrial design
d)
To assign or transmit the registration of the industrial design;
e)
To conclude license contracts
However these rights will extend only to acts done for industrial or commercial
purposes and shall not preclude any third party from performing any of such acts
in respect of a product embodying the registered industrial design after the said
product has been lawfully manufactured, imported, offered for sale, sold, used or
stocked in Sri Lanka.
Additional Protection
1.
Provision has also been made in terms of the recent Act for a person to
apply to the Director-General for an assignment of a Design application or a
registered design where the essential elements of such industrial design are the
subject of an application for registration or have been derived from a design for
which the right to protection belongs to such person.
2.
In terms of the recent Act more protection is afforded to an owner of
industrial design where in the event the Director-General finds that the essential
elements of an industrial design is derived from a design already registered,
where an application for registration has been made he is under a duty to notify
the applicant and the owner of the cited design of same. The registered owner of
the cited design is permitted to oppose the registration of such design.
Case Law
There have been no reported decisions made under the recent Act.
TAIWAN
By Paul C.C. Chen
I. RECENT DEVELOPMENTS
A. The new patent law became effective as of July 1, 2004
In February of 2003, the President signed the Amended Patent Law Act
(hereinafter referred to "the Act"), and all of the new provisions have taken effect on
July 1, 2004. The main features of the Act are summarized as follows:

Abolishing the opposition system during the publication period in order to
integrate the opposition and invalidation systems for patents.

The certified priority document can be supplemented within four months from the
date of filing (originally, the term was three months from the date after filing).

A request for re-examination can be filed within 60 days (originally, 30 days)
from the date of receipt of the official rejection. However, such an extension
shall not apply to utility model applications since a formal examination system
without the procedure of the substantive examination shall apply thereto.

The request to convert a patent application (among design and associated deign
applications) must be made within 60 days (originally, 30 days) from the date of
receipt of the official notification.

Since the opposition system has been abolished under the amended Patent Law,
Letters Patent can be issued soon after the grant of a patent with the payment of
the official fee. Therefore, the applicant can obtain Letters Patent more quickly
under the amended Patent Law.
B. New Official Fees for Design Patent became effective as of July 1, 2004
Some rates have been significantly increased while others are decreased. The
summarized items of new Official Fees for the Design Patent are herewith enclosed
for your reference.
Item
Filing fee (unchanged)
Fee
Before: NTD3000
Present: NTD3000
Filing a response against formal
Official Action (unchanged)
Before: NTD3500
Present: NTD3500
Voluntary amendment to the
Before: NTD1000
specification or drawings for a pending Present: no official fee
patent application
Invalidation (unchanged)
Before: NTD8000
Present: NTD8000
Recordal of an Assignment for granted Before: NTD3500
patent (42.86% decreased)
Present: NTD2000
Recordal of License
(50% decreased)
Issuance of a certified copy of a patent
(66.67% increased)
Re-issuance of a Letters Patent
(52% decreased)
Issue fee
(60% decreased)
Before: NTD4000
Present: NTD2000
Before: NTD600
Present: NTD1000
Before: NTD1250
Present: NTD600
Before: NTD2500
Present: NTD1000
Annual Fees: 1st to 3rd Year (Each Year) Before: NTD2500
Present:
NTD1700 for individual, school or
small entity
Annual Fees: 4th to 6th Year (Each
Year)
Before: NTD5000
NTD3800 for individual, school or
small entity
Annual Fees: 7th to 9th Year (Each
Year)
(10% decreased)
Annual Fees: 10th up (Each Year)
(10% decreased)
Before: NTD10000
Present: 9000
Before: NTD20000
Present: 18000
Source:
http://www.tipo.gov.tw/patent/patent_cost.asp
C. Strengthening IPR protection and deterring piracy and counterfeit by
Ministry of Justice Directive
On October 29, 2003, Ministry of Justice Directive urged all prosecutors to
impose heavy penalties for IP-infringement cases. Prosecutors should also appeal to
higher courts in a case where the penalty is deemed too light.
II.
DATA ON DESIGN APPLICATION FILED AND GRANTED
A. Filed and granted design patent from 2000 to 2003
Filed
Granted
Year 2000
2001
2002
2003
2000
2001
2002
2003
Total 9052
9098
8036
7984
7018
8148
5891
6461
Filed
Total
9500
9000
8500
8000
7500
7000
1
2000
2
2001
3
2002
4
2003
Year
Granted
Total
10000
8000
6000
4000
2000
0
2000
1
2001
2
2002
3
2003
4
Year
Source:
http://www.tipo.gov.tw/patent/patent_report/patent_report.asp
B. Applicant – local and foreign
Filed
Granted
Year
2000
2001
2002
2003
2000
2001
2002
2003
Local
6879
6820
5596
5383
4979
5834
3898
4241
Foreign 2173
2278
2440
2601
2039
2314
1993
2220
Filed
Total
8000
6000
4000
Local
Foreign
2000
0
20001
2
2001
3
2002
4
2003
Year
Granted
Total
8000
6000
4000
Local
Foreign
2000
0
1
2000
2
2001
3
2002
4
2003
Year
Source:
http://www.tipo.gov.tw/patent/patent_report/patent_report.asp
C. Granted from January 1 to October 1 2004
Local -- 2680
Foreign -- 1540
Total -- 4220
Source:
http://www.patent.org.tw/phome.asp
III.
An Interesting Court Decision
A. Case：
 Taipei High Administrative Court 2003 No. 1829
 Decided on June 30, 2004
B. Conclusion：
 Case rejected；and
 The plaintiff shall bear the expenses of the lawsuit.
C. Outline of the facts
 The plaintiff argued against an associated design patent obtained and
registered by the defendant because the associated design patent has been
published or put to public use prior to applying for patent.
 The plaintiff cited a reference to prove the absence of the conditions set forth
in Paragraph One of Articles 107-1-1 and 107-2, and claimed that the
associated design patent should not be granted since such invention can be
easily accomplished by persons having ordinarily knowledge in the art based
on prior art before the application for patent was filed.
 The defendant replied that the associated design patent should be examined
based on the filing date of the first application. Therefore, the facts and
evidence provided by the plaintiff were invalid.
D. Issue：
Whether the associated design patent should be examined based on the filing date
of the first application？
THAILAND
by Mr. Titirat Wattanachewanopakorn
1.
Statistics on Design Patent Applications Filed and Patents Granted by the
Patent Office at the Department of Intellectual Property (DIP) of Thailand’s the
Ministry of Commerce
The total number of new applications filed for design, invention, and petty patents as
of July 2004 is 58% of the total number of applications that were filed in 2003. The
total of patents granted by the DIP as of July 2004 is 65% of the total number of
patents granted in 2003.
The total number of new design applications filed during January to July of this year
is 1,905, of which 1,381 applications were filed by Thai applicants and 524
applications were filed by international applicants. The total number of design patents
granted by the DIP from January to July of this year is 979, of which 660 design
patents were granted to Thai owners and 319 design patents were granted to
international owners.
We expect that by the end of 2004, the number of design patent applications filed and
granted by the DIP will be about the same or higher than last year.
Figure 1: Number of New Patent Applications Filed In Thailand From 1999 To 2004
Year Design Patents
Thai
International Total
Applicants Applicants
Invention Patents
Total
Thai
International Total
Applicants Applicants
Thai
Applicants
International
Applicants
Total
1999 1,148
573
1,721
738
4,438
5,176
1,886
5,011
6,897
2000 1,939
758
2,697
561
4,488
5,049
2,500
5,246
7,746
2001 1,970
692
2,662
534
4,798
5,332
2,504
5,490
7,994
2002 2,415
822
3,237
615
3,874
4,489
3,030
4,696
7,726
2003 2,607
1,007
3,614
819
4,141
4,960
3,426
5,148
8,574
2004 1,381
524
1,905
473
2,598
3,071
1,854
3,122
4,976
Last updated: July 2004
Figure 2: Number of Patents Granted In Thailand From 1999 To 2004
Year Design Patent
Invention Patent
Total
Thai
International Total Thai
International Total
Applicants Applicants
Applicants Applicants
Thai
Applicants
International
Applicants
Total
1999 81
125
206
29
363
392
110
488
598
2000 119
209
328
45
371
416
164
580
744
2001 360
360
720
58
738
796
418
1,098
1,516
2002 596
768
1,364 39
1,063
1,102
635
1,831
2,466
2003 641
565
1,206 59
964
1,023
700
1,529
2,229
2004 660
319
979
439
470
691
758
1,449
31
Last updated: July 2004
Figure 3: Applicants of Design Patents Filed In 2004 Divided By Countries
Asean
EU Countries
Countries
6%
1%
Japan
Others
4%
10%
USA
6%
Thai
73%
Last updated: July 2004
2.
Statistics on Disputes Over Design Patents Brought Before Thailand’s
Intellectual Property & International Trade Court (IP&IT Court)
As of July 2004, there were 19 cases related to patents that were filed with the IP&IT
Court, 2 of which involve patent infringement and 17 involve patent cancellations.
No new design patent infringement case has yet been filed with the IP&IT Court this
year. Only 1 invention patent infringement and 1 petty patent infringement case has
been filed in 2004 (both handled by Tilleke& Gibbins).
Court judgments have been rendered between January and July 2004 for 3 design
patent infringement cases previously filed in previous years.
From the total of 17 patent cancellation cases that were filed with the IP&IT Court as
of July 2004, 7 cases were against design patents, 8 cases were against invention
patents and 2 cases were against petty patents.
2 court judgements have been rendered this year for design patent cancellation actions
that had been filed in the previous years.
Figure 4: Number of Patent Infringement Cases Filed With The IP&IT Court From
1999 To 2004
Year
Patent Infringement Cases
Design Patent Invention Patent Petty Patent Total
1999
2
2000
2001
4
2002
2
2
2003
2
2
2004
Last updated: July 2004
1
1
1
Exhibit 5: Number of Patent Infringement Cases With Final Judgments From IP&IT
Court From 1999 To 2004
Year
Patent Infringement Cases
Design Patent Invention Patent Petty Patent Total
1999
2000
2
2001
2002
1
1
2003
2004
2
3
2
3
1
Last updated: July 2004
Exhibit 6: Number of Patent Cancellation Cases Filed with the IP&IT Court from
1999 to 2004
Year
Patent Cancellation Cases
Design Patent
Invention Patent
Petty Patent
1999
2000
1
2001
3
2
1
2002
7
16
2
2003
2
5
1
2004
7
8
2
Last updated: July 2004
Total
Exhibit 7: Number of Patent Cancellation Cases Finalized with the IP&IT Court
from 1999 to 2004
Year
Patent Cancellation Cases
Design Patent
Invention Patent
Petty Patent
2002
3
5
2
2003
4
8
1
2004
2
6
1
Total
1999
2000
2001
Last updated: July 2004
3.
Ministerial Regulation Regarding Fees and Exceptions of Fees For
Patents and Petty Patents B. E. 2547(A.D. 2004)
On September 29, 2004, Thailand’s Ministry of Commerce issued the Ministerial
Regulation Regarding Fees and Exceptions of Fees For Patents and Petty Patents
B.E. 2547 (A.D. 2004) that overrides the existing list of fees as stated in the
Ministerial Regulation No. 23, B.E. 2542, (A.D. 1999) Issued Under the Patent Act,
B.E. 2522 (A.D. 1979). The new Ministerial Regulation reduces Government fees
by half. The types of fees affected include fees for filing a new application,
publication, examination, opposition, annuities, registering a license agreement,
assignment, etc. In addition to these fee reductions, the Ministerial Regulation
exempts fees where the applicant is a government agency, an educational
institution, a non-profit organization or a foundation that serves public interests
with respect to education, religions, or welfare. The fee reduction and exemptions
are intended to encourage awareness among Thai nationals about patent rights and
the need to protect such rights by registration.
Figure 8: New List of Fees Per Ministerial Regulation Regarding Fees and
Exceptions of Fees for Patents and Petty Patents B.E. 2547 (A.D. 2004)
No.
Fees
Previous
New Rates (Baht)*
Rates(Baht)*
1,000.00
500.00
1
An application for patent for an invention
2
An application for patent for design
500.00
250.00
3
An application for petty patent
500.00
250.00
4
Applications for patent for the same
4,500.00
2,250.00
Design which are filed at the same
time in a number Of ten or more applications
5
Publication of a atent application
500.00
250.00
6
A request for patent examination
500.00
250.00
7
An Opposition to a patent application
500.00
250.00
8
A patent or petty patent
1,000.00
500.00
9
Annual fees for invention patent:
Fifth year
2,000.00
1,000.00
Sixth year
2,400.00
1,200.00
Seventh year
3,200.00
1,600.00
Eighth year
4,400.00
2,200.00
Ninth year
6,000.00
3,000.00
Tenth year
8,000.00
4,000.00
Eleventh year
10,400.00
5,200.00
Twelfth year
13,200.00
6,600.00
Thirteenth year
16,400.00
8,200.00
Fourteenth year
20,000.00
10,000.00
Fifteenth year
24,000.00
12,000.00
Sixteenth year
28,000.00
14,200.00
Seventeenth year
33,200.00
16,600.00
Eighteenth year
38,400.00
19,200.00
No.
FEES
Nineteenth year
Previous
New Rates (Baht)*
Rates(Baht)*
44,000.00
22,000.00
Twentieth year
50,000.00
25,000.00
280,000.00
140,000.00
Fifth year
1,000.00
500.00
Sixth year
1,300.00
650.00
Seventh year
1,900.00
950.00
Eighth year
2,800.00
1,400.00
Ninth year
4,000.00
2,000.00
Tenth year
5,500.00
2,750.00
15,000.00
7,500.00
Fifth year
1,500.00
750.00
Sixth year
3,000.00
1,500.00
Or payment of all annual fees in one payment
4,000.00
2,000.00
First extension
12,000.00
6,000.00
Second extension
18,000.00
9,000.00
or payment of annual fees in one payment
in one payment
10
Annual fees for design patents:
Or payment of all annual fees in one payment
11
12
Annual fees for petty patents :
Fees for the extension the term of petty patents:
13
An application for the registration of a license
500.00
250.00
14
An application to record the assignment of a
patent or petty patent
An application for conversion of a patent Or petty
500.00
250.00
200.00
100.00
1,000.00
500.00
100.00
50.00
1,000.00
500.00
15
patent
16
A licensing certificate
17
A substitute of a patent, petty patent or licensing
certificate
18
An appeal against an order of decision of the
Director-General
No.
FEES
19
Certifying sets of documents
Each set of documents (if more than 10 pages)
Previous
Rates(Baht)*
New Rates (Baht)*
100.00
50.00
10.00
5.00
100.00
50.00
Certifying sets of documents
Each set of document (if not more than 10 pages)
20
Any other application
* Please note that the current exchange rate is approximately Baht 41 to US$1
VIETNAM
By Pham Nghiem Xuan Bac
1. New developments in the protection of industrial designs
On November 5, 2003, Ministry of Science and Technology issued Circular No.
29/2003/TT-BKHCN (“Circular 29”) guiding the implementation of procedures for
registration of industrial property rights with respect to industrial designs (IDs).
Previously, the implementation of procedures for the registration of all subjects of
intellectual property was stipulated in a sole Circular No. 3055/TT-SHCN dated
December 31, 1996, issued by the Ministry of Science, Technology and Environment
(now the Ministry of Science and Technology) providing guidelines on the procedures
to register of IPRs as stipulated in Decree No. 63/CP dated October 24, 1996 of the
Government. The issuance of Circular 29 is in line with the current trend of issuing
specialized circular to regulate the implementation of procedures for the registration
for each subject matter of intellectual property.
The Circular, has been greatly appreciated by those in Vietnam concerned with
intellectual property issues. Please see our previous Country Report for information
relating to the preparation for the long awaited Circular.
The following will introduce salient new points in the Circular 29.
Simplifying procedures and requirements for IDs registration
Henceforth, among other changes, the signatures of applicants in original documents,
including Power of Attorney, enclosed in application dossier will no longer need
notarization. In addition, documents evidencing the right to file application of
applicants are not required at the time of filing.
The requirements on number of application copies, the descriptions of claimed IDs as
well as of the set of drawings/photographs of claimed IDs in the application dossier
have been reduced.
Shortening examination period
The duration of both the formal examination as well as substantive examination of
claimed IDs have been considerably shortened. From now on, the formal examination,
which used to last three months, now lasts for only one month and the time for
substantive examination has been shortened to 6 months (instead of 9 months
previously).
Therefore, it may normally take a total of 7-9 months to have a claimed ID registered
instead of 12 or 13 months as previously. The change will give applicants the legal
tools to enforce their ID rights and should encourage applications for IDs in Vietnam.
In addition, an expedited examination can be requested. Applicants can request the
NOIP or relevant authorities to shorten the time limit for implementing the procedures
in relation to registration of IDs, provided that an additional fee is paid and the NOIP
or relevant authorities accept that request.
Providing definition of “product”
In accordance with Article 784 of Civil Code, IDs is defined as follows “an industrial
design is the outer appearance of an product represented by lines, form, and colors or
the combination of such elements, which has new characteristics to the world and may
serve as a pattern for the manufacture of industrial products or handicrafts”.
Previously, there was no definition of what a product is. Practically, it is unofficially
understood that “product” refers to finished products which are used by consumers.
Circular 29 provides a clear definition of “product”. Accordingly, product includes
those, which are manufactured by industrial or handicraft method, having a definite
structure and function and being able to independently circulate.
The definition of “product” in Circular 29 is remarkable in the development of IDs
protection in Vietnam as it may give an answer to the question of whether it is
possible to grant protection for IDs embodied in components, including internal
component parts of a product.
Henceforth, IDs applied on component or an internal component part of a product, for
example motor vehicle engines can be registered in Vietnam. This is because such
component or internal component part are considered as independent products,
separately from the whole product to which they belong.
Among the criteria of a “product” as defined by Circular 29, the most important one is
“being able to independently circulate”. The provision may be interpreted that only
IDs embodied in components, which are detachable from a product to independently
circulate, are eligible to be protected. Consequently, IDs applied in a component of a
product, which cannot be detached from such product remains unprotectable in
Vietnam.
ALLOWING SUBSEQUENT ALTERNATIVES OF AN EARLIER-FILED ID TO
BE FILED
Previously, it is not permitted for an applicant to file applications for alternatives of
an earlier-filed ID. According to the Circular 29, an applicant can additionally file
applications for claiming subsequent alternatives of an earlier-filed ID with a
declaration that such alternatives relate to the earlier-filed ID.
Determining scope of protection
Among the significant changes in regulations for IDs protection in Circular 29, the
most notable ones are regulations relating to Claim and Description of claimed IDs.
Previously, scope of protection of IDs is determined according to its
drawings/photographs. However, in Circular 29, it is provided that scope of protection
of IDs is determined according to Claim of IDs. In accordance with Circular 29,
Claim of an ID must declare all of its characteristics which applicant wishes to protect
and which are different from already-known similar IDs.
This provision has caused great concerns in IP community, especially IP practitioners,
given that it may be contradictory with international practice in this matter. In most of
countries, scope of protection of an ID is determined according to its
drawings/photographs but not according to a written Claim. Therefore, the manner of
determining scope of protection for an ID like the one in Circular 29 may not be
appropriate. For example, it is, in some cases, impossible or rather difficult to
describe an ID by words. Because of the very nature of IDs, it should be considered
by sense of sight basing on drawings/photographs rather than basing on wording in a
written Claim. Moreover, once the scope of protection of IDs is determined solely by
its written Claim, the evaluation of the similarity of two IDs becomes a hard task,
especially in case of infringement. Additionally, in accordance with item 7.3 of
Circular No. 825/TT-BKHCNMT of the Ministry of Science, Technology and
Environment dated May 3, 2000 guiding the implementation of Governmental Decree
No. 12/1999/ND-CP on Sanctions against Administrative Violations in the field of
industrial property, the ground to determine infringement is the scope of protection of
IDs which is identified in the Industrial Design Patent. However, currently, Claim of
IDs is not published in the Industrial Design Patent but IDs drawings/photographs
instead. Therefore, it is impossible to determine infringement basing solely on
Industrial Design Patent.
2. Statistics on IDs application in Vietnam in the period 1989-2001
Year
1989
1990
1991
1992
1993
1994
1995
1996
1997
1998
1999
2000
2001
2002
2003
Applications for Industrial Design
Vietnamese
Foreigner
52
8
194
6
420
2
674
14
896
50
643
73
1023
108
1516
131
999
157
931
126
899
137
1084
119
810
242
596
240
447
233
Total
60
200
422
688
946
716
1131
1647
1156
1057
1036
1203
1052
836
680