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Industrial Designs

What are industrial designs?

Industrial designs are defined as the appearance of all or part of an object with an industrial application.   That is to say, the fundamentals of industrial design are the ornamental aspects.

Design protection is acquired through registration in the Register of Designs in which protection is sought. The length of protection varies between countries. In the case of the European Union it will be protected for 5 years from the date of the application for registration, and may be renewed for successive periods of 5 years, up to a maximum of 25 years. After the 25-year period, any third party may freely use the design without the owner’s consent, since it will have fallen into public domain.

Designs may be two-dimensional, such as a pattern on a table cloth or a carpet; or three-dimensional, such as a chair or a shoe.

Basic requirements for registration

For a design to be registered, it must comply with 2 types of registrability requirements:

Objective requirements: Novelty and uniqueness.

  • The design must be new: That is to say, an identical design must not exist up to the moment the application for registration is submitted.
  • The design must be of a unique character: A design is considered to have a unique character when the impression that the design produces on a person skilled in the art (i.e. the examiner who will analyze the design at the Design Office), differs from the general impression produced by any other pre-existing design. In other words, it must produce an “impact” in the market.

Formal requirements: These are the requirements relating to the documentation and granting procedure. To ensure a successful process it is imperative you contact and expert to prepare the industrial design application.

The importance of a background search

To ensure the success of the registration of an industrial design, it is recommended you first proceed with a prior art search. The search of prior designs of similar products allows us to find the existence of prior industrial or intellectual property rights that may be an impediment to the registration of the industrial design. These possible impediments may be, among others:

  • The existence of a previously registered identical design.
  • The existence of a previously registered trademark containing an identical or similar design.
  • The existence of a design that has already been made public or fallen into public domain.

It is essential to carry out a prior analysis that will allow us to rule out possible obstacles in the design registration process and ensure the success of the registration.

Non-registrable designs

There are certain designs that, despite being new and unique, cannot be registered. This may be either because they are designs dictated by their technical function, or because they are interconnected designs.

  1. As indicated above, a design must be primarily ornamental, not dictated by its technical function. Therefore, when the characteristics of the appearance of a product are dictated exclusively by its technical function, it cannot be protected as a design, but possibly as a Utility Model or as a Patent.
  2. A design cannot be registered if it must necessarily be reproduced with a precise shape and dimension so that the product in which it is incorporated can be mechanically connected to another product so that each of them can fulfill their function.

This means that in some cases although industrial designs comply with general registrability requirements, they still fall under legal prohibitions that must be taken into account before reaching registration. For this reason it is highly recommended you always consults first with a legal expert before proceeding with an application.

National, European or International Registration

Industrial Design registration grants territorial protection. This means that it will only have legal protection in those countries where it has been effectively registered.

There are 3 ways to register a design:

  • National route: Before the national office of your country of interest.
  • European route: Through registration at the European Design Office, where, by means of a single application, protection will be obtained in the 27 member states.
  • International route: Protection can be obtained through the Hague system in all the designated countries (as long as they are members), by means of a single application in a single language.

It is important to note that in the European Union, an unregistered design obtains a protection of 3 years from the date on which the design was first made public within the European Community. from the date on which the design was first made public within the European Community. That said, for the design to obtain protection, it must meet the requirements of novelty and uniqueness. This is because some sectors create a large number of designs that often have a very short commercial life and therefore require protection without the need to comply with lengthy registration procedures, and for which the duration of protection is of minor importance.

Other services for Industrial Designs

If you have a large number of designs, whether national, European or international, it is essential to control and monitor all designs in a centralized way, i.e. from the same law firm. This allows you to:

Register Designs

Register the designs in any country without the need to contact different law firms in each country.

Design Status

Control the status of the design registrations.

Monitor Designs

Monitor the renewal dates of each registration.

Upto Date Data

Keep the design holder’s data updated.

Track Status

Keep an eye on the designs in all the countries where protection has been granted.

KUDU Legal has the experience and tools to manage any portfolio of designs (as well as trademarks, patents and utility models). We keep the client informed at all times of the status of their designs as well as the appropriate actions to be taken for their effective maintenance, regardless of the countries in which services are required.

Transfer and license of industrial designs

Designs are intangible goods with economic value and can therefore be the object of business transactions. They can be sold and they can be the object of licenses or legal agreements.

If the owner of a design intends to expand its business to achieve a competitive advantage, the design license may be a suitable mechanism for this purpose.

Given that each company profile has different objectives, our experts at KUDU Legal will analyze the most appropriate strategy for each situation and, if necessary, will be in charge of drafting the licensing contract as well as their registration in the Design Registry, thereby providing protection against third parties.

If, on the other hand, what you are interested in is transferring or acquiring a design, the drafting of an assignment contract will be essential in order to avoid future conflicts.

At KUDU Legal, we will take all necessary steps to safeguard your interests as well as preparing any contracts or legal documents you may require. Subsequent registration of contracts relating to the Industrial design in the Register may be required in order to be effective against third parties.

Actions against design infringement

Unauthorized use of a design happens when a third party is using a registered design without the owner’s authorization. Since this is an illegitimate use and could cause considerable economic losses for your company, it is essential to act as soon as possible.

If you find yourself in this situation, do not hesitate to contact us. KUDU Legal will take all necessary steps to ensure your design rights are safeguarded.

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