SYNOPSIS
7.1 Introduction
7.2 The Nature of lndustrial Designs 7.2.1 Introduction
7.2.2 Design features having no utility 7.2.3 Design features affecting utility 7 .3 Policy Objectives of Designs Protection
7 .3.1 The interests of industry
7.3.2 The interests of the dcsigning company 7.3.3 The public interest
7.4 Mode] Law for Developing Countries on Industrial Designs 7 .5 Conditions for Protection
7.5. l Introduction 7,.5.2 Novelty 7.5.3 Disclosure
7.5.4 Similarity to previous designs 7 .6 Registration of lndustrial Designs
7.6.1 Rights to legal protection 7.6.2 Registration procedure 7. 7 Scope of Exclusive Rights 7 .8 Duration of Protection
7.9 Rights conferred by Registration 7.9.1 To restrain infringements 7.9.2 Limitation of rights 7 .10 Assignment
7.11 Licensing
7 .12 Relation to Copyright
7 .13 International Protection of lndustrial Designs
7.13.1 The Paris Convention for the Protection of lndustrial Propcrty
7 .13.2 The Hague Agreement Concerning the Deposit of lndustrial Designs . 7 .13.3 The Locarno Agreement Establishing an International Classification
for Industrial Designs.
INDUSTRIAL DESIGNS 189 7 .1 Introduction
Since the time when man first made tools and utensils art has had a strong and continuing influence on the way in which such tools and utensils were crafted. The beauty of ancient pottery and buildings is evidcnce of this influence which is capable of rendering a drinking vessel or a place of shelter a pleasure to behold.
Prior to the mechanization of industry, and the introduction of production-li ne techniques, the art embodied in each particular article was to a large extent unique in that the creator of such articles was free, within the boundaries set by utility, to mode) each article according to his concept of beauty. Nonetheless, customer appeal, fashion and cultural influence often resulted in a craftsman producing a string of articles of a similar or idcntical shape or bearing a similar or identical pattern. The craftsman was not, however, committed to producing strings of identical articles, but was free to make each article an individual embodiment of usefulness and art and, indeed, this was generally the case for the greater part of man's history.
The industrial revolution brought important changes to the way in which art was blended with useful articles. For the first time it was possible to produce articles in large quantities using machinery and the power of steam. Mass production, however, relies ta a large extent on the production of identical items for its efficiency and for these items to be saleable they needed not on]y to meet the pub]ic's expectations as to their utility but also to appeal in their appearance to the taste of the potential purchaser.
The importance of the appearance of articles did not, then, diminish with the coming of mechanised production; rather, the financial value of the appearance of artic
les in appealing to potential customers became more apparent to industry. A firm could profit by quickly producing large quantities of articles that appealed in appearance to the taste of the public but could find it difficult to sell these large quantities if they did not have such appeal. Thus, since the advent of the industrial revolution, increasing attention has been paid by both industry and governments to the maximization of the benefits that the appearance of articles may provide both to industry and to the consumer .
. JP. Smith. Indu.striai Designs and Geographical lndicalions of Origin, SPAC/83/4, pp.2-3)
7.2 The Nature of lndustrial Designs 7.2.1 Introduction
Generally speaking, an industrial design is the ornamental or aesthetic aspect of a useful article. The ornamental aspect may consist of the shape and/or pattern and/or colour of the article. The ornamental or aesthetic aspect must appeal to the eye. The article must be reproducible by industrial means; this is why the design is called indust
rial. If this element is missing, the creation may rather corne under the category of art, whose protection is assured by copyright law, rather than by a law on industrial property.
In British-type laws, an industrial design means features of shape, configuration, pattern or ornamentation applied to an article, being features that in the finished article, can be judged by the eye, but does not include· a method or principle of construction.
190 BACKGROUND READING MATERIAL ON INTELLECTUAL PROPERTY
In order to be protectable, an industrial design must, according to some laws, be new, and according to other laws, original.
The main aspects of the definition of an industrial design can be conveniently considered separately.
7 .2.2 Design f eatures having no utility
ln almost any manufactured article that serves a useful purpose, thcre are elcmcnts of construction that may be varied, or additional elements that may be added that do not detract overly from the utility of the article, but do add to the visual appeal of the article to the potential purchasers. The catering to this public taste has always becn an artistic endeavour. However, unlike fine art, the merit of the appearance of an article mass
produced for sale lies almost solcly in its ability to stimulate the purchase of the article. A successful product must often be sold in competition with other articles of equal utility and its appearance is often the deciding factor in the purchaser's mind.
A definition of one type of industrial design covers those factors of appearance which do not add to the utility of an article but which do affect the appeal of the article to potential purchasers. Perhaps the most obvious examples of such factors of appearance are the patterns of fabrics or the shape and patterning of crockery. With these examples one can clearly define certain functional requirements. Fabric for clothing needs to be sui table for that purpose in terms of its durability, its ability to be tailored, its ability to retain or dissipate heat and its comfort to the wearer. Crockery also serves a purpose in that it should be washable and contain foodstuffs without leakage. Within these by no means exhaustive parameters the manufacturer has a wide dcgree of latitude in the choice of the particular form his wares will take. Indeed, with regard to fabrics and crockery there are few manufacturers whose wares are identical and the choice between striped, checked or floral-patterned fabric, or between round·, hexagonal or embossed crockery is generally a matter
of
taste for the customer as such factors have little, if any, effect on the utility of the article.7 .2.3 Design f eatures aff ecting utility
Sorne elements of an article may, whilst adding to the appeal of the article, dctract from or add to its utility. The particular shape of a knife may not only appeal to the eye, but may also affect the ease with which it may be held and used, the casing of a portable radio may appeal to the customer whilst also performing its function of protecting the encased circuitry from damage and the tread pattern of a tyre may appeal to the eye whilst also affecting the efficiency of the tyre.
It can be seen from these examples that certain design features of an article may perform a useful purpose whilst also affecting the appeal of the article to the potential customer. This class of element constitutes the second type of industrial design.
(Ibid .• pp.5-6J
INDUSTRIAL DESIGNS
7 .3 Policy Objectives
or
Designs Protection191
The protection of industrial design and models is of altogether special importance to developing countries since most of them are extremely rich in traditional arts and folklore, which stimulate the creativity of craftsmen. The legal protection of designs and models by its nature encourages the creative spirit and helps industrial development.
In addition to the general benefit to developing countries, the specific intérests which are served by industrial designs protection are those of industry, the dcsigning company and the public.
7 .3.1 The interests of industry
Industrial designs are by nature produced and used for the purposes of tracte. The effect on the saleability of articles bearing designs can, however, be detrimental as well as positive. Given the importance of economies of scale in the production of goods, the appeal of a design has a correspondingly large effect on the profitability of companies mass producing goods which incorporate designs. The industrial design can, therefore, be seen as a financially important commodity for the company that has developed it and for other companies which may wish to use iL
The interests of industry regarding the conditions of such protection are:
the ability to dctermine the existence and scope of protection. Industry would be unnecessarily hampered if the existence of protection for a particular design could not be clearly dctermined before manufacture. If, on the other hand, the existence and scope of protection can be determined, then any company could ascertain with some degree of certainty which designs it was free to copy and which designs should not be copied.
ability to challenge "unfair" protection. Unfair protection is most likely to have a strong restrictive effect on other companies trading in the same field.
Where unfair protection is sought or granted it would be in the interests of other companies to be able to take action to oppose or remove the unfair protection.
assured availability. Where a design is protected. it is in the interests of other companies that there is a clearly defined limit to the lcngth of protection. The actual term itself is subject to conflicting interest. The design owner would seek to enjoy the longest term possible, whereas his competitors would favor the shortest.
ease of assignment or licensing. The financial importance of the industrial design renders it a desirable commodity to rival companies. These companies may wish to purchase the design or the right to apply it from the original owner. lt is, therefore, in the interests of industry that the rights of protection granted to designs are easily assignable or licensable.