“Beauty lies in the eyes of Beholder”. Whether you agree something is beautiful or not, however, if you recognize something by its looks, you start noticing and connect with it, surely it is a subject matter of protection. And, here comes the Industrial Design Laws. According to it, if a product has aesthetics, which is new, and which can be industrially produced, it becomes a subject matter of Design protection.
When we say new, the newness can be as simple as unique curves in a bottle, or indifferent carvings or protrusions on the cap of the bottle. For being new, you need not produce entirely a different thing, rather, even one specific feature is different, it can be good enough to claim design production.
For being industrially produced, it is not required that something should be machined, mechanized or produced through an automatic mechanism. It simply means that the article or product can be produced on mass scale, and it should not be something be produced in single pieces, and every time when it is reproduced, it changes its aesthetics.
Design Filing Strategy
For a global protection, Designs are to be filed in each and every country, and within a period of 6 months. However, filing, enforcing and further exploiting it commercially in each and every country is not commercially feasible in such a small time-frame, hence it is suggested that the owner should do a thorough analysis and feasibility before determining the Filing strategy for the Design applications around the world. Filing should generally be done in those countries where we can foresee our commercial reach, either by export, or directly accessing market channel in those geographies, or strong possibility of licensing the Design in these specific geographies.
Designs can be filed using either photographs or through professional illustrations of the products as line drawings. In case, the novelty/newness of the aesthetics lies in structural aspects of the designs, rather than the colour combinations, it is suggested to file them as illustrated line drawings. As illustrated line drawings have broader coverage of protection, and is not limited by the colour combinations. However, it is suggested to discuss with our experts to help you determine how broadly all novelty aspects should be covered, whether line drawings or photographs.
Novelty is another important aspect is to identify, how to protect all novel features of your product or product parts. Is one application is enough, or are you required to file more than one applications? Many times, there are different parts of the products which can be sold on the shelf, and each of these parts may have unique aesthetic features and can be filed separately as design application, along with the design of a complete product. Sometimes, the parts are internal to the product structure, and cannot be seen as such when a person is looking at the product. Any automobile can be a good example here, where parts are also sold off the shelve. Sime of these parts is fitted with, like seat cover of the car, audio system for the car, etc.
As mentioned earlier, these aesthetic features should be new. Hence, it is always good to do a Novelty Search for design before filing the application in multiple jurisdictions. Even though the examination of design application is not intensive by the authorities, however, it is significant when the applicant tries to enforce the application against any prospective infringer. In case, if the prospective infringer identifies any novelty killing prior art, the granted design shall be in jeopardy. Moreover, if the registered design is invalidated, the design of the product which had been adopted for a long time, and heavy investment is made over it, shall be open for anyone to be copied. Hence, for a proper and strong protection, and even before investing over products aesthetic, it is suggested that a Novelty Search should be carried out so that it can be made sure that the design is new, and once the design is granted it can be enforced without a fear of invalidation. In case, if the proposed aesthetic feature proves to be not new, the product design team can suggest few more designs for adoption, which can again go through the Novelty Search process. Changing the design, in this way, at an initial stage before production shall be cost-effective and ensures stronger protection.
Freedom to Operate the Design
Another angle to be looked into is whether the applicant is free to operate to use a particular design, even if he is not seeking the protection against a design to be adopted for a product. Free to operate means that the design is not conflicting with a Third Party’s registered design. In case such if a conflict occurs, there is always a risk of future litigation, where the third-party owner of the design may bring the adopter of the design in it’s product to the court of law for infringement of his right. Hence, a Freedom to Operate search and analysis is suggested to overcome such risk. In case, if any conflicting registered design is identified in this exercise, it’s suggested to use a workaround to overcome the use of such registered design. Another way out is to take a license of the conflicting registered design for adopting in a product.
For filing, enforcing, and avoiding third-party infringement risk, the designs, aka aesthetic features should be taken delicately with much precision, so that they can support business strategies effectively. For products lacking new technical features, the registered design can be a great asset and can help to hold a strong market hold. We, at Singhwal, closely work with your Business team to understand their Business requirements, so that we can suggest a good strategy, offensive or defensive, for Industrial design to maintain Business Continuity, as well as for strongly developing a Design portfolio, which can prove to be a strong business asset.