Industrial Designs – Objectives, Rights, Infringements, Defences of Design Infringement

What are industrial designs?

• Industrial design encompasses the process of creating the visual appearance of mass-produced items. It focuses on achieving an aesthetically pleasing and functional design within the constraints of production costs. This field aims to ensure that products are not only visually appealing to consumers but also efficient in their intended function. Therefore, the design’s visual attributes play a crucial role in consumer choice, especially when multiple products offer similar technical performance.
• Legally, industrial design refers to the protection granted to original ornamental and non-functional aspects of products through a registration system. This protection helps safeguard the unique visual characteristics of a product, which can significantly influence consumer preference in a competitive market. As a result, legal protection of industrial designs is essential for manufacturers, as it helps them distinguish their products and achieve market success.
• The evolution of industrial design protection is closely linked to the rise of industrialization and mass production methods. The first significant legislation in this area emerged in the United Kingdom with the Designing and Printing of Linens, Cotton, Calicoes, and Muslins Act of 1787. This law granted temporary protection to new and original designs for textile patterns, highlighting the importance of design in the textile industry. Over time, the scope of protection expanded to include various other industries, culminating in the Designs Act of 1842, which broadened the scope to cover all new and original designs applicable to any article of manufacture, regardless of the method of application.
• A parallel development occurred in France with the Law on Literary and Artistic Property of 1793, which initially offered limited protection for designs. By 1806, France enacted a specific law for industrial designs, establishing a special council in Lyon to manage design deposits and resolve disputes. This system was later extended to other cities, reflecting the growing recognition of design protection’s importance in different manufacturing sectors.
• The establishment of legal protection for industrial designs requires a careful balance of interests. Effective protection must be ensured while avoiding unnecessary restrictions on the use of existing designs. Key considerations include defining what constitutes a protected design, determining the rights of design owners, setting the duration of these rights, and outlining the methods for acquiring and enforcing them.

Objectives of Industrial Designs

The objectives of industrial designs are multifaceted, aiming to balance aesthetic appeal, functionality, and legal protection. Here are the primary objectives:

1. Enhance Aesthetic Appeal: One of the foremost objectives of industrial design is to improve the visual attractiveness of products. A well-designed product often stands out in the market, influencing consumer preferences and purchasing decisions. This appeal can be crucial in competitive markets where multiple products offer similar functionality.
2. Ensure Functional Efficiency: While aesthetics are important, industrial design also seeks to ensure that products are functional and user-friendly. The design must enhance the product’s usability and effectiveness, ensuring that it performs its intended function efficiently.
3. Facilitate Mass Production: Industrial designs aim to create products that are not only visually appealing and functional but also feasible for mass production. This means that the design must be practical to manufacture at scale without excessive costs.
4. Protect Intellectual Property: Legal protection of industrial designs is another key objective. By granting exclusive rights to the ornamental aspects of a design, intellectual property laws help prevent unauthorized copying and imitation. This protection incentivizes innovation by ensuring that designers can benefit from their creations.
5. Promote Market Differentiation: Effective industrial design helps companies differentiate their products in the marketplace. Unique and distinctive designs can establish a brand’s identity and contribute to its competitive edge.
6. Encourage Innovation: By providing legal protection and financial incentives, industrial design encourages continuous innovation. Designers and manufacturers are motivated to invest resources into developing new and creative designs.
7. Support Consumer Choice: A diverse range of designs offers consumers more options and helps meet varied tastes and preferences. This diversity contributes to a more dynamic and competitive market.

Rights in Industrial Designs

The rights associated with industrial designs are crucial in safeguarding the visual and non-functional aspects of a product. These rights ensure that creators and companies benefit from their innovative designs. Below are the key rights associated with industrial designs:

1. Exclusive Right to Use and Prevent Exploitation:
   • The proprietor of a registered industrial design has the exclusive right to prevent others from using or exploiting the design without permission. This includes the right to stop unauthorized production, importation, and sale of articles embodying the design.
   • The proprietor can take legal action against anyone who reproduces or sells products that imitate the design.
2. Entitlement to Rights:
   • The legal right to an industrial design typically belongs to the original creator. However, in cases where the design is created by an employee or contractor, the rights may be transferred to the employer or the individual who commissioned the design. This reflects the principle that the design was created as part of a paid duty or contract.
   • Designs created with the assistance of computers are treated similarly, where the person responsible for the computer-generated design is considered the author.
3. Acquisition of Rights:
   • Industrial design rights are usually acquired through a formal registration process. Most legal systems require the filing of an application that meets specific formal criteria, such as providing detailed representations of the design.
   • Some jurisdictions may also grant rights upon the creation and fixation of the design, without requiring formal registration.
4. Rights to Manufacture, Import, and Sell:
   • The proprietor has exclusive rights to manufacture articles that incorporate the registered design. This ensures that competitors cannot legally produce similar products using the same design without authorization.
   • Besides manufacturing, the owner of the design also holds exclusive rights to import, sell, hire, or offer for sale articles that embody the design.
5. Stocking of Articles:
   • In some legal frameworks, the proprietor’s rights extend to prevent others from stocking articles that embody the design. Although this right is sometimes seen as excessive, it helps enforce the design owner’s rights by targeting unauthorized stockpiles of infringing products.
6. Imitation and Unauthorized Exploitation:
   • The rights granted extend not only to the exact reproduction of the registered design but also to imitations that differ only in insignificant details. This ensures broader protection against slight modifications aimed at evading infringement.
7. Duration of Rights:
   • The duration of industrial design rights varies by country, usually ranging from 10 to 25 years. Typically, this protection is divided into renewable terms, requiring the proprietor to renew the registration periodically to extend the protection. The shorter duration is often attributed to the association of designs with trends and fashion, which are subject to frequent changes.

Classification of Designs

The classification of designs plays a crucial role in organizing and standardizing industrial design registrations across different countries. This system helps streamline the registration process and ensures consistency in the management of design rights internationally. The Locarno Agreement provides a framework for this classification.

Locarno Agreement

1. Purpose and Structure:
   • The Locarno Agreement, signed on October 8, 1968, and amended on September 8, 1979, establishes an international classification system for industrial designs. This agreement aims to create a uniform classification scheme to facilitate the registration and protection of designs globally.
   • The classification is primarily administrative and is intended to harmonize design registration procedures across participating countries. However, each member country retains the flexibility to adapt the classification according to its own legal standards and practices.
2. Implementation:
   • Under the Locarno Agreement, each member country can choose to use the international classification as either a principal or subsidiary system. This allows for local adaptation while maintaining a standardized approach.
   • National design offices are required to include the classification numbers and subclasses in their official registration documents and publications related to design deposits.

Classification Scheme

1. Structure of the Scheme:
   • The classification scheme is divided into a series of classes and subclasses, each identified by specific numbers. These classes cover a wide range of product categories, ensuring that designs are categorized systematically.
   • Each class may contain multiple subclasses, providing detailed categorization within broader product types.
2. List of International Classes:
   • The following is a list of the 32 internationally accepted classes as per the Locarno Agreement’s Seventh Edition (effective from January 1, 1999):
   • Class 01: Foodstuffs
   • Class 02: Articles of clothing and haberdashery
   • Class 03: Travel goods, cases, parasols, and personal belongings, not elsewhere specified
   • Class 04: Brushware
   • Class 05: Textile piece goods
   • Class 06: Furnishing
   • Class 07: Household goods, not elsewhere specified
   • Class 08: Tools and hardware
   • Class 09: Packages and containers for the transport or handling of goods
   • Class 10: Clocks and watches
   • Class 11: Articles of adornment
   • Class 12: Means of transport or hoisting
   • Class 13: Equipment for the production, distribution, or transformation of energy
   • Class 14: Recording, communication, or information processing equipment
   • Class 15: Machines, not elsewhere specified
   • Class 16: Photographic, cinematographic, and optical apparatus
   • Class 17: Musical instruments
   • Class 18: Printing and office machinery
   • Class 19: Stationery and office equipment, artist’s materials
   • Class 20: Sales and advertising equipment, signage
   • Class 21: Games, toys, tents, and sports goods
   • Class 22: Arms, ammunition, and projectiles
   • Class 23: Fluid distribution equipment, sanitary installations, and solid fuel burning apparatus
   • Class 24: Medical and laboratory equipment
   • Class 25: Building units and construction elements
   • Class 26: Lighting apparatus
   • Class 27: Tobacco and smokers’ supplies
   • Class 28: Pharmaceutical and cosmetic products, toilet articles, and apparatus
   • Class 29: Devices for the care and handling of animals
   • Class 30: Machines and appliances for preparing food or drink, not elsewhere specified
   • Class 99: Miscellaneous

Infringements in Industrial Designs

Infringement in industrial designs refers to the unauthorized use, reproduction, or imitation of a registered design by a third party without the consent of the design’s owner. The primary purpose of protecting industrial designs is to give exclusive rights to the creator or proprietor, allowing them to commercially exploit the design and prevent others from doing so without permission. Below is a detailed overview of how infringement occurs and its consequences.

Types of Infringements

1. Direct Copying:
   • This occurs when a person or entity produces an article that is a direct replica of the registered design. In such cases, the infringer intentionally copies the design for commercial or industrial purposes, without any modifications or alterations.
2. Imitation with Minor Variations:
   • Infringement also includes designs that are not exact copies but bear substantial similarity to the registered design. Even if minor variations are introduced, the essence of the design remains unchanged, leading to confusion among consumers or unfair competition.
3. Unauthorized Manufacture or Sale:
   • If an individual or company manufactures, sells, offers for sale, or imports articles embodying the registered design without the owner’s consent, it constitutes an infringement. The design holder has the exclusive right to produce and commercialize the design, and any such actions by others violate their rights.
4. Importing or Exporting:
   • Importing or exporting products that incorporate the registered design without permission is also an infringement. This is significant in the context of global trade, where infringing products may be brought into or sent out of a country where the design is protected.

Legal Actions for Infringement

When infringement occurs, the owner of the industrial design can take legal action to protect their rights. The following remedies are generally available:

1. Injunction:
   • The design owner can seek a court order to stop the infringer from continuing the unauthorized use of the design. An injunction prevents further production, sale, or distribution of the infringing goods.
2. Damages:
   • The infringer may be liable to pay damages to the design owner for any losses incurred due to the infringement. This compensation can include lost profits or royalties that the owner would have received if the design had been legally licensed.
3. Seizure and Destruction of Infringing Products:
   • Courts may order the seizure or destruction of goods that infringe on the registered design. This helps prevent further commercialization and harm to the design owner’s market.
4. Account of Profits:
   • The design owner can claim the profits made by the infringer as a result of the unauthorized use of the design. This remedy is aimed at ensuring that the infringer does not unjustly benefit from their actions.

Defenses Against Design Infringement

In the context of industrial design infringement, defendants may raise various defenses to challenge the claims made against them. These defenses aim to demonstrate that the alleged infringement does not violate the rights of the design owner or to invalidate the claim based on specific legal principles. Below are key defenses commonly utilized in design infringement cases:

1. Invalidity of the Registered Design

• Lack of Novelty: One defense involves arguing that the registered design is not novel. For a design to be protected, it must be new and original. If the design was publicly disclosed before the registration, it may not meet the novelty requirement, making the design registration invalid.
• Lack of Originality: The accused may claim that the design lacks originality. For a design to be protected, it must possess a unique and individual character. If the design is merely an obvious variation of existing designs, it may not qualify for protection.
• Non-Compliance with Registration Requirements: The design may not have met all the formal requirements necessary for registration. This could include issues related to the submission of documents, the accuracy of representations, or adherence to procedural rules.

2. Prior Use

• Pre-Registration Use: The defendant can argue that they were using the design or a similar design before the registration of the disputed design. If the defendant can prove prior use, they may have the right to continue using the design without infringing on the newly registered design.
• Public Domain: The accused might assert that the design was already in the public domain before the registration, meaning it was known or used by others before the claim of exclusive rights was made.

3. Functional Features

• Functional Exclusion: Industrial design protection typically covers only the aesthetic aspects of a product, not its functional features. If the design in question is primarily functional rather than ornamental, it may not be eligible for design protection. The defendant may argue that the contested design is essentially functional and not subject to design rights.

4. Independent Creation

• Design Independently Developed: The defendant may claim that the design was created independently and without reference to the registered design. Demonstrating that the design was developed through a separate creative process can be a valid defense against infringement.

5. Accidental or Non-Commercial Use

• Non-Commercial Use: In some cases, the defendant may argue that their use of the design was non-commercial and therefore does not constitute an infringement. This defense is based on the principle that industrial design rights are intended to protect commercial exploitation rather than incidental or personal use.

6. Non-Infringing Modifications

• Substantial Alteration: If the defendant’s design has been modified significantly from the registered design, they may argue that the changes are substantial enough to avoid infringement. The modification must be such that the resulting design is sufficiently different in appearance and function from the registered design.

7. Doctrine of Exhaustion

• Exhaustion of Rights: This defense asserts that once a design has been lawfully sold or distributed by the design owner, the rights to control the further use or resale of that design may be exhausted. This means that the owner cannot prevent the defendant from using the design if it was lawfully acquired.