KLAW 411: INTELLECTUAL PROPERTY

LESSON 6:INDUSTRIAL DESIGN

DR FANCY TOO
 Devotional thought

Psalm 32:7 You are my hiding place; you will

protect me from trouble and surround me
with songs of deliverance
What is industrial design?

Sec 84 of the Industrial Property Act defines

it as any composition of lines or colour or any
three dimensional form whether or not
associated with lines or colours; provided that
such forms or composition gives a special
appearance to a product of industry or handicraft
and can serve as a pattern for a product of
industry or handicraft
 DEF CONT.

The ornamental or aesthetic features of a

product. In other words, it refers only to the
appearance of a product and NOT the
technical or functional aspects.
Industrial designs
• Industrial designs is relevant to a wide variety of
products of industry, fashion and handcrafts from
technical and medical instruments to watches,
jewelry, from house holds products, furniture and
electrical appliances to cars and architectural
structures, textile.
• Industrial design is also important in relation to
packaging containers and get up of products.
Industrial designs

• For businesses, designing a product

generally implies developing the product’s
functional and aesthetic features taking
into consideration issues of manufacturing
or the ease of transport, storage repair
and disposal
Two dimensional designs
Three Dimensional design
Examples of Industrial Designs
ii) Importance of Industrial Designs in
Business
• Enterprises devote a lot of time and
resources to enhance the design appeal of
their products. New and original designs are
often created to appeal to the market needs
• Customize products to appeal to specific market
segments
• Small modifications to the design of some
products e.g watch, may make them suitable for
different age groups, cultures or social groups
• Create a new niche market.
In a competitive market place, many companies seek
to create a niche market by introducing creative
designs for their products to differentiate them
from those of their competitors
Importance of Industrial Designs in Business

• Strengthen their brands images.

• Creative design are often combined with
distinctive trademarks to enhance the
distinctiveness of a company’s brand (s).
Many companies have successfully created
or redefined their brand image through a
strong focus on product design
• It adds value to a product.
Importance of ID

• While the functional elements of a bottle do not

generally differ significantly from products to
products. its appearance is likely to be one of
the major determinants of success in the
marketplace.
• This is why industrial design registers in many
countries have along list of designs for simple
products such as bottles
iii) Why protect ID

Strengthening competitive edge

• The creator is granted the exclusive right to prevent others
from unauthorized copying, imitating, making, selling, or
importing any product in which the design is incorporated or
to which it is applied and thereby strengthen your
competitive advantage
• Return on investment
• Registering a valuable designs contributes to obtaining a
fair return on investment made in creating and
marketing the relevant product, thereby improving your
profit
Why protect IDs

• Revenue generation
• Registered design may be licensed (or sold) -
Industrial design may be assigned, licensed,
mortgaged or transferred, enter markets that you
are otherwise unable to serve.
• Encourages fair competition and honest trade
practices which in turn, promote the production
of a diverse range of aesthetically attractive
products
Why protect IDs

• Business asset increasing commercial value of

a company and its products –the more
successful a design the higher the value is to the
company
• Industrial design forms part of the fixed assets of
a company.
• A protected design may also be licensed or sold
to others for a fee. Through this you may be able
to generate more revenues
iv) Integrating Design protection into
broader business strategy
• Decisions on how, when and where to protect a
company’s industrial designs may have an
important impact on other areas of design
management.
• It is important to integrate issues of design
protection into the broader business strategy of
an enterprise. For example the cost of
protection, the effectiveness of protection and
issues of ownership of designs, may be
important considerations when deciding:
Integrating Design protection into
broader business strategy
• Whether to undertake a design development in
house or to commission an outside agency
• The timing of the initial use of a new design in
advertising, marketing or public display in an
exhibition
• Which export markets to target
• If, when and how to license or assign a design to
be commercially exploited by other companies in
return for economic remuneration
a) Who owns a design

• The creator of a design is usually the first

owner of the design, unless there are
special circumstances:
• Employee-If created in the course of
emplyment, its iwned by employer
• Commissioned work
• However the designer of a product may
have automatic copyright protection of the
drawings of the original design
Registration of an Industrial Design
• In most countries an Industrial Design
must be registered in order to be protected
under industrial design law
• It may involve whether there is an
examination or not as to the form and
substance of the application for the
registration of the design, especially to
determine novelty or originality.
• novelty or originality may differ from
country to country,
• registration process itself varies from
country to country.
Basic requirements for registration

a) The design must be new or Original.

independently created by the designer and is not
a copy or an imitation of existing designs
• An industrial design is deemed to be new if it
has not been disclosed to the public, anywhere
in the world, by publication in tangible form or, in
Kenya by use or any other way prior to filing
date or where applicable to the priority date of
the application for registration.
Novelty
• Requirement of novelty is found in all laws,
however the nature of the novelty differs
amongst the laws of various countries.
• Absolute novelty-The design must be new
as against all other designs produced in all
other parts of the world at any previous
time and disclosed by any tangible or oral
means
• Universal novelty- a qualified standard of
novelty is sometimes required
case:
• London Distillers Limited v. PonuMonu Distillers IPT No.
47 of 2006
• the applicant stated that it was the registered owner of
industrial design No. 376 of a bottle, and that the
Respondent had infringed by stocking and selling a
design similar to the registered design. The Respondent
argued that the design was wrongfully registered as it
lacked novelty and was already considered by prior art,
and therefore it did not meet the statutory requirements
for registration.
• The tribunal held that the Applicant did not adduce
sufficient evidence to demonstrate that it was the owner
of the design in question as they choose it from among
other designs stocked by its supplier.
Requirement for registration cont..

b) Industrial application
• An industrial design must be capable of
being reproduced by industrial
• Also it must be possible to apply an
industrial design to an article which
may be either two-dimensional or three-
dimensional.
• Also refers to how an item can be made or
used in some the production of goods or
services in a particular trade.
case

Lowell v. Lewis, 15 F. Cas. 1018, 1817 U.S.

App. LEXIS 169 (C.C.D. Mass. May 1,
1817)] where the court held that the
usefulness requirement is satisfied if the
invention is not frivolous or injurious to the
well-being, good policy, or sound morals of
society.
Requirements for registration cont..
c) Must have individual character. If the overall
impression produced by the design on an
informed user differs from the overall
impression produced on such a user by any
earlier design which has been made available
to the public.
• Features of appearance which are dictated
essentially by technical or functional
considerations are not protectable
• Some offices register designs based on
formality others like Kenya do substantive
examination to check the existing designs on
the register for novelty or originality
ii) Registration of many designs
• In some countries (Kenya) you may apply for registration
of many designs (10,50) through a single application as
long as they are all related to the same product or class
of products under international classification or to the
same set or composition of articles
• If you have designed a set of chairs, tables and dressers
and would like to protect them, many countries would
allow you to file a single application covering all of them
paying only one single fee as they all belong to the same
class of products,
Registration of many designs cont..
• Generally although fees are charged for each
additional design, they are significantly less than
the cost of filing a separate application for each
design
• In some countries however you may have to file
a separate application for each design.
• Many of this countries while limiting an
application to a single design, permit several
variants of that design; others allow for an
exception to the single design rule when all the
designs relate to a set of articles
Registration of variant designs

• Variants would include for example

two earings, which differ in that one is
a clip-on and the other is for pierced
ears.
• To be considered variants, the design
must be applied to the same article
and must not differ substantially from
one another.
v) Industrial Design Registration
Process

Application Formality
Examination

Publication Novelty
Examinatio
n

Opposition
period
Registration
Registration process cont.
• section 87 of the Industrial Property Act
• i)an application in the prescribed form;
• ii)a power of attorney, where the applicant
is represented by an agent;
• iii)drawings, photographs or other graphic
representations of the article embodying
the industrial design and an indication of
the kind of products for which the industrial
design is to be used; and
• The prescribed application fee
Deferment of publication

• Once a design is registered it is entered into the

design register and published.
• In some countries/regions (not applicable to
Kenya), it may be possible to request deferment
of publication in which case the design will be
kept secret for a certain period specified by the
relevant law.
• Preventing publication for a period of time may
be preferable for strategic business reasons
Rights provided by design protection
• When an ID is protected by registration, the
owner is granted the right to prevent
unauthorized copying or imitation by third
parties. This include the right to exclude
others from making, offering, importing,
exporting or selling any products in which the
design is incorporated or to which it is
applied.
• The law offers the creator of an industrial
design or his successors the exclusive right
to sell or cause to be sold for commercial or
industrial purposes the goods in which the
design is incorporated
Scope of Industrial design protection
• Registration of an industrial design shall
expire at the end of the fifth year following
the date of filing of the application for
registration. It may then be renewed for
two further consecutive periods of five
years upon payment of a prescribed fee
Remedies

Section 106 of the Industrial Property Act-

provides for these:a) Injuctionb) damages
(c) any other remedy provided for in law.
See -Safepark Limited v General Plastic Limited
Civil Suit no. 588 of 2014
case:
• Royal Mabati Factory Limited v. ImarishaMabati Limited
(2018) eKLR], the plaintiff’s complaint was that the
defendant had infringed its rights to the iron sheets by
advertising and embodying similar features identical to
its own. The plaintiff was praying for a permanent
injunction restraining the defendant company from
infringement of industrial designs by way of advertising,
packaging, distributing, marketing, or in any way availing
to the public its produce by use of industrial designs. The
court ruled in favour of the plaintiff
Case

Gerber Garment Technology Inc.vLectra

Systems Ltd (1997) RPC 443 CA the court
observed that the loss of profits is assessed
by calculating what the designs rightful
owner’s profit less the direct expenses. This
direct expense is then calculated by the
addition of the production costs and sale of
the questionable products
Defenses
• Expiry of period of registration
• The plaintiff has no title to sue. He may question whether
the plaintiff is a registered proprietor of the design of the
duly organized agent or licensee
• The design is not entitled to protection. Disentitlement to
protection can be pleaded on the grounds that-
a)The design was previously registered in the country
b)It had been published in the country prior to the date of
registration
c)The design is not a new or original design.
Protection of unregistered designs
• For some countries or common economic
areas such as the European Union, it
possible to obtain limited industrial designs
protection for unregistered designs for three
years from the date on which the design has
been published in the European Union.
• The unregistered designs provides
companies with the opportunities to test
market their products before going through
the efforts and expense of registering
designs. Many of which may succeed in the
market
Protecting designs abroad
• If company intends to export products bearing an original
designs or intends to license the manufacture, sale or
export of such products to other firms in foreign countries
it is important to protect the design in those countries
• How do you protect
• ID protection is territorial , thus limited to the country
where protection is sort
• There is a grace period of six months from the time on
which you applied for protection in the first country to
claim right of priority when you apply for design
protection in other countries. Once this period has
elapsed, you will not be able to protect in those countries
Ways of protecting
• National route
• Applying separately to the national IP Offices of each
country where protection is sort
• This is very cumbersome and expensive as translation
into the national languages is generally required as well
as payment of administrative (legal fees)
• Regional Route
• if interested in a group of countries which are members
of regional agreements e.g ARIPO, OAPI, Benelux
Designs Office BDO for protection in Belgium, the
Netherlands and Luxembourg
International route
• Companies interested to register their designs in many
countries may also use the procedures offered by the
Hague Agreement Concerning the International Deposits
of Industrial Designs, a WIPO administered treaty.
• An applicant from a member country to the Hague
Agreement can file a single international application with
WIPO. The design will then be protected in as many
member countries as designated
• This method is simple and cheaper
• The cost of protection varies depending on the number
of designs to be protected and the number of countries
where protection is sought
4) Other legal instruments for
protecting industrial designs
Differences between copyright protection and
industrial design protection for designs
• In some countries the applicable laws allows for
protection of ID as copyright for example in the
design of textile and fabrics.
• In many countries you may obtain cumulative
protection (copyright protection and ID
protection) which can exist concurrently for the
same design,
• While in a few countries, the two forms of
protection are mutually exclusive
 Protection under the laws of unfair
competition
• In many countries IDs are often protected under
the laws on unfair competition. Thus a design
may be protected against acts of unfair
competition including, in particular, slavish
copying and acts that may lead to confusion,
acts of imitation or use of third parties reputation
• However protection under unfair competition is
generally significantly weaker and infringement
is more difficult to prove. Kenya is yet to enact a
law on unfair competition
THANK YOU FOR YOUR
ATTENTION!