Obtaining IP Rights: Industrial Designs

Industrial designs rights are generally obtained through an application made at the national or regional intellectual property (IP) office. In some countries, design rights are also available through use.

(Image: Getty Images/sorbetto)

Qualifying for industrial design protection

In general, to qualify for protection an industrial design must:

  • comply with the definition of a design under the applicable law – in some jurisdictions a logo cannot be registered as an industrial design because it may not be considered to be a product.
  • be "new" – i.e., no identical design has previously been made available to the public. Designs are deemed identical if their features differ only in immaterial details.
  • be original – the design must have been independently created by the designer and not a copy or imitation of an existing design. Designs are not original if they do not significantly differ from known designs or combinations of known design features.
  • have individual character – meaning that the overall impression that a design produces on an informed user differs from the overall impression produced on such a user by any other design which has already been made available to the public.

Costs of protecting industrial designs

The costs of industrial design protection vary significantly from country to country and may include:

  • Application/registration fee (to be paid to the IP office) – fees depend on the number of designs registered or the number of reproductions submitted for each design.
  • Costs associated with the services of an IP agent. This may be a requirement of the IP office.
  • Payment of renewal fees to maintain the exclusive right over an industrial design, usually paid on a five-year basis.
  • Costs associated with the translation of relevant documentation if the industrial design is to be protected abroad.

The relevant national or regional IP office will be able to give you details on their fee structure. Consult our list of national and regional IP offices.

 Expert tip – It is essential that you keep your unregistered design confidential. Only share it within the framework of an agreement, making it clear that the design is confidential.

 

The industrial design registration process

An industrial design application has to be filed (and paid for) in a national or regional IP office. In some countries, engaging the assistance of an IP agent is compulsory and a "power of attorney" will have to be filed.

In general, the following steps must be taken:

 Expert tip – In some jurisdictions you can obtain limited protection for unregistered designs. Such protection is available within the territory of the European Union for three years from the date on which the design was first made available to the public.

1. Application

2. Formal examination

3. Substantive examination

4. Registration

5. Grace period

6. Renewal

Rejection of an industrial design application

An industrial design application will be rejected if it:

  • does not meet the requirements of novelty, originality and/or individual character;
  • is dictated exclusively by the technical function of a product. Such technical or functional design features may be still protected but by other IP rights (e.g. patents, utility models or trade secrets), depending on the facts of each case;
  • incorporates protected official symbols or emblems, such as a national flag;
  • is considered to be contrary to public order or morality.
Warning: Depending on the applicable legislation, there may be further restrictions on what can be registered as a design. It is advisable to consult an IP agent or the relevant IP office.

 Expert tip – Some jurisdictions exclude handicrafts from industrial design protection, as their industrial design law requires that the product to which an industrial design is applied be “an article of manufacture” or replicated by “industrial means”.

Obtaining industrial design protection abroad: three routes

Industrial designs are territorial rights – they are only protected in the countries or regions where they are registered. If a design has not been registered in a given country, it will not be protected in that country.

You typically have six months from the date on which you applied for protection in the first country, to claim the right of priority for protection in other countries. Beyond that period, the design may no longer be considered "new" and may not be eligible for protection at all in other territories.

(Image: Getty Images/sumkinn)

Three ways to register your industrial design abroad

National route

Apply to the national IP office of each country in which you are seeking protection. The process can be expensive: translation into the relevant national languages is generally required as well as payment of administrative fees. These fees vary substantially from country to country. 

Regional route

If you want protection in a group of countries which are members of intergovernmental entities, you can file a single application at the relevant regional IP office.

International route

WIPO's Hague System significantly simplifies the process for simultaneously seeking protection in more than 70 countries.

Rather than filing national applications in many languages, the Hague System enables you to file a single application, in just one language. 

Case studies

(Photo: KYMDAN)

KYMDAN: A Strong Name Half a Century in the Making

Due to the unique design of KYMDAN products, industrial design rights are a critical part of its business. The company has registered over 240 industrial designs.

(Photo: Panama Springs)

Panama Blue: A Design as Clear as Water

Developing an award-winning bottle design that is protected by the IP system, Panama Blue has become one of Panama’s most popular national products and exports.

Lenovo: Driving Business Success Through Innovation

Lenovo’s award-winning Yoga Tablet, launched in autumn 2014, incorporates new technologies and design features covered by over 100 patent and design rights.

Find out more

(Icon illustration credits: Getty Images/Momento Design/DStarky)