IP Firm of the Year 2010 Irish & European Patent and Trade Mark Attorneys
Protect Your Creative Genius
05 January 2004Sinead Dunne
Protected email address
Irish Entrepreneur Magazine, December 2003/January 2004.
As an entrepreneur the protection of your intellectual property rights is invaluable and something that should not be overlooked. Intellectual property rights boost the value of your company.
Intellectual property rights can be protected by way of patents, designs, trade marks and copyright. Most people are aware of patents, trade marks and copyright, few are familiar with designs. The focus of this article is design protection, a form of protection that can be invaluable to those involved in product design and development.
A registered design is a form of protection granted for novel features of the appearance of a product. In Ireland, the current law is contained mainly in the Industrial Designs Act, 2001. In Europe the European Community (EC) Regulation provides for a European Registered Design which is a single unitary right covering all 15 Member States of the European Community and a right which will automatically extend to all new Member States when the Community extends in May 2004.
A design may be registered for the appearance of the whole or part of a product resulting from the features - in particular, the lines, contours, colours, shape, texture or materials - of the product itself or its ornamentation. Products for which registration may be sought include any industrial or handicraft item, packaging or graphic symbols. Features of appearance that are solely dictated by technical function are not registrable as designs.
The design must be new and have individual character. A design is considered to be new if no identical design has been made available to the public anywhere before the date of the application for registration. In order to have individual character, a design must create an overall impression on the informed user that is different from the overall impression produced on such user by any design that was publicly available before the date of filing the application.
It should be noted that, within the EU, a 'grace period' applies, whereby a valid application to register a design can be filed within 12 months of non-confidential disclosure of the design by the designer or someone legitimately authorised to do so; outside the EU the grace period may not be available. So, if you, as a designer have a design that you are interested in protecting but which you have disclosed within the last 12 months, it may still be possible to obtain a valid design registration.
Why Protect Your Design?
If you are involved in designing or making products whose appearance is a major selling point then design protection is for you. By registering your design you are not only creating an incentive for investors but you are protecting your intellectual property in a way that may allow you to get a return on capital invested in development of the design.
A registered design is a monopoly right conferring on its owner
the exclusive right to use the design and to authorize others to use it. It is a legal property right which may have a duration of up to 25 years and can be licensed or transferred, similar to other property.
As the owner of a registered design, you have the exclusive right to prevent third parties not having your consent from applying the same design or a design not substantially different from your registered design to a product. Hence, you have the exclusive right to the design as such rather than solely to the design when applied to the product for which it was registered. If a third party infringes a registered design, remedies that may be granted by the Court can include an injunction, seizure of infringing products or articles, delivery up of infringing products or articles, damages or an account of profits.
How Do I Register A Design?
The process of protecting a design is relatively quick and inexpensive. Applications to register a design are filed usually through a Patent or Trade Mark Attorney. Any person claiming to be the proprietor of a design may apply to the register the design but the author, namely the creator of the design, is usually the proprietor of the design unless the right to the registered design is transferred.
An application to register a design must contain the name and address of the applicant and drawings or photographs showing the novel features of the design. An application to register an Irish design is filed at the Irish Patents Office. Applications to register a European design may be filed at the Office for Harmonization in the Internal Market (OHIM), in Alicante. Once filed an application is examined for registrability and if it is in order, the design proceeds to registration. The procedure is usually completed quite quickly, typically within a few months. In most countries the term of protection is 5 years from the date of registration and is renewable up to a maximum term of 25 years upon payment of renewal fees at 5 yearly intervals. Once the design is registered, the owner should label the product "Registered Design No……" to indicate that the design is registered.
In considering design protection, consider your market place. A design should be registered in those countries where it is intended to be made or used. The procedure is similar to that in Ireland but advice should be sought from a Patent or Trade Mark Attorney in the relevant country. It should be noted that, it is possible to file an Irish design application, and, up to six months later, apply to register the same design in other foreign countries claiming the filing date of the Irish application.
Types of Territorial Protection available
An Irish registered design confers the above mentioned rights on the owner for Ireland only. A European Registered design can be obtained by filing an application at OHIM. EU Regulation No. 6/2002 which entered into force on 6 March 2002 introduced this new system for design registration. It introduced two forms of protection:
(1) A Registered European Design Right and (2) An Unregistered European Design Right.
A European Registered Design is a cost-effective way of obtaining design protection throughout the member states of the EU by filing a single application. The cost for registering a European Design compares very favourably as compared with filing a separate application in each country of interest.
The European Unregistered Design Right runs for a three-year period, which comes into existence automatically by making products incorporating the design available to the public on or after 6 March 2002. The proprietor of an unregistered design right must prove copying to benefit from any remedies.
Summary
If you have a design that you believe is unique, seek expert advice immediately. Protection of your intellectual property rights is not an area in which to take chances. A short term saving now may result in loss later.
Fast Links
Publications of this author
Contact