This article is written by Valli Rachana, pursuing Diploma in Intellectual Property, Media and Entertainment Laws from LawSikho. The article has been edited by Dhruv Shah (Associate, LawSikho) and Dipshi Swara (Senior Associate, LawSikho).
Table of Contents
Introduction
“Design is intelligence made Visible”, Alina Wheeler. Looks matter. Visual image matters, when one designs a product. The first quality about the product that attracts the customers to approach is “good looks”.
Here comes the rescue of all the designers by protecting their designs by applying for a ‘Design Patents’. A Design patent gives protection to the outer appearance of a design or ornamentation. It should be novel, non-functional and non-obvious. In an application for a design patent, the designer must claim certain features of the design that he/she wants to protect.
Design patents are not fully utilized by the designers for the protection of their work. Therefore, many designers do not protect their Intellectual property under design protection. Still, in the market, there are many copycats who create ‘knockoffs’ which can threaten the authenticity of the original designers. As a result, both the designers face rivalry.
Design patents are helpful to the designers as they give them the right to exclude others from making similar goods. Moreover, a designer can obtain a separate design patent for each element of a design which will expand the design protection.
Design patent : ornamental designs of functional items
Design patent law gives protection for the outer image design elements of a functional product. Such as clothing, product packaging, the shape of the product. The design characteristic must be ornamentation applied to a functional product that cannot be detached from that product. Simply put, the way the ‘thing’ looks.
However, if the look of the design is dictated by the function that it performs, then the design is said to lack ornamentation and cannot receive design patent protection. If a design aspect is functional then a “utility patent” is the only way to protect the design aspect.
A design patent can be protected for a series of figures, pictures or illustrations of the design. The claim will generally reference the figures and descriptions that are present in the application. The Patent and Trademark Office will review the application for compliance with formalities and ensure that the design is “new.”
Once a design patent is granted, the patent holder holds the right to prevent others from copying, using, selling/ making the products of the protected designs. This way, one can protect the unique look of a product (Clothing, handbag etc) for a period of 14 years.
If a designer not only designs an aesthetically innovative garment, but also one that includes advances in the function of the garment then additionally it might be crucial to consider filing a utility patent.
Are design patents economically feasible?
In the recent past, design patents were underutilized and did not hold any consequential value. But, in current times, design patents have increased in the number of applications and hold high value. One should take the design patents protection seriously and should not allow the misuse of their protected design by others. One can always go for both design patent and utility patent application together thereby protecting both the looks and functionality of a product. The designer should be confident about the looks of his/her design before pursuing design protection.
There are some very appealing advantages to design patents. They are relatively inexpensive. A typical design patent application can be prepared and filed for less cost compared to a typical utility patent application. Design patents tend to issue much more quickly than utility patents.
In our experience, design patents are issued within 10-16 months after filing; whereas, utility patents take anywhere from 24-48 months.
Accordingly, if one wants to list their product as “patented” sooner rather than later, a design patent might just do the trick. When the look of an invention is an important aspect or consideration of the invention, the designer should discuss with one’s own patent attorney before applying for a design patent.
Registration of design patents
A design patent protects the way a product looks, as opposed to a utility patent which protects the way that a product is used and works. A design patent provides protection for novel, ornamental product designs. Protection can be afforded to configuration or shape, surface ornamentation or both. Design patents are thus typically used in industries where the product’s outer qualities are of special significance, such as clothing and accessories.
While some brands such as Gucci have been using design patents for many years, incorporating design patents into an IP strategy has only recently become more widespread. In recent years companies within the fashion industry have increasingly recognized the importance of design patent protection. As a result of this trend, there has been a significant increase in design patent applications being filed for clothes and accessories.
Even though design patent law is becoming increasingly popular as a means for designers to protect their works, its full potential has not yet been fully exploited. Although trends come and go as time lapses, some trends remain classics forever. If appropriate design protection is not given for these successful trends, copycats will be able to copy them very easily.
Thus, when designer companies anticipate that a new product may have a long life span, it is strongly recommended to file an application for a registered design to protect their product from competitors in the market.
Advantages of strong design patent
There are numerous advantages of strong design patents. They help in fighting legal battles with copycats and competitors to protect their designs. Such infringers tend to copy or imitate only the designs – not the marks – meaning that trademarks are little help in defending the brand. However, a cease and desist letter citing a design patent carries significant weight. It warns the infringer that the patent holder is serious about protecting its designs and ready to take legal steps against infringement.
The rise in the number of design patent registrations has already resulted in an increase in litigation in this area.
The requirements to obtain a strong design patent protection
The requirements to obtain a strong design patent protection are by designing the outer image of the product in a unique style. It is the first and foremost quality to qualify for design registration. Smell, colour, sounds do not qualify for design protection as they fall under trademarks and do not constitute the appearance of a product. Another important requirement is a design patent is available only for creations that are new and original.
Designs should be new and possess individual character in order to be protectable. A design is considered to be new if no identical design or no design differing only in tiny details has been disclosed before it. Moreover, a design possesses individual character if the overall impression conveyed to the user differs from that conveyed by any other previous designs.
Finally, a design must be correctly and accurately represented in the application in order to qualify for strong protection. Designs should be represented graphically using technical drawings, which can be made either in black and white or in colour. Up to seven different views of the product can be filed in order to represent the design and these views may be plain, in elevation or in perspective. However, no explanatory text, wording or symbols can be added to explain the design.
The purpose of graphical representation is to display all features of the design that the company wishes to protect. It is thus important to be extremely careful when preparing the application in order to ensure that the features of the design are displayed as thoroughly as possible. The quality of representation is also paramount.
The last requirement is that the design respects public policy and morality standards. For example, the registration of designs promoting violence or discrimination will be refused.
Its substantive examination is limited to two issues:
- Whether the design represents the appearance of the whole or part of a product; and
- Whether the design contains an element that goes against public policy and morality.
Thus, a design patent can be validly registered by WIPO even if it does not meet the necessary legal requirements. In such cases, obtaining a registered design patent does not guarantee 100% protection and it is uncertain how effective such a design patent will be when challenged before a court by a competitor. There is a risk that the design patent could be declared invalid and cancelled by the judges. Fashion houses should thus be extremely careful when applying for design patent protection in order to obtain a strong protection right which will be useful in case of litigation.
Conclusion
Designers have multiple options of Intellectual property to choose from the protection of their products. Each product requires different forms of protection depending on its features and qualities. According to the current market and the available budget, a designer can seek the type of protection needed. It is strongly suggested that a designer should seek advice from the trusted and experienced counsel in design patents on how to protect products without any legal complications.
Developing a comprehensive and effective IP strategy to protect a design requires time and money. Registering design patents, utility patents or trademarks involves a significant cost. However, by protecting intellectual capital in the form of IP assets, companies can improve their position on the market and boost their income. Moreover, the IP system also allows companies to combat counterfeiting and reduce the risk of their IP rights being infringed.
When used together, design patents, utility patents and trademarks can form complete and holistic cover to ensure strong protection for valuable designs.
Consequently, designer houses should balance the level of protection offered by different IP rights with their business goals and budgets.
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