Did you know that User Graphic interfaces could be protected? All predatory actions by rival companies can be proceeded against if you use the right protective mechanisms in IPR management strategies. How would you proceed? Have you heard of industrial design?
An industrial design in the context of intellectual property rights (“IPR”) refers to the aspects of a product that distinguishes its ornamental features like its shape, dimensions, colour or patterns (fun facts: industrial designs, as they are called in Canada, are referred to in the U.S. as design patents and to community design in the European Union). Industrial designs are distinct from patents (more specifically, “utility” patents) because they do not protect any aspects of the functionality of the article or how it works. Popular examples of products that need to be protected by design laws are textiles, handicrafts, electronic devices, and graphical user interfaces that have distinguishing designs. Most jurisdictions require a registration process to protect a design from any IPR violation. The rights associated with an industrial design include the right to stop the third parties from selling a copy of the design or making articles with a similar design.
World Industrial Design Day is celebrated every year to commemorate the establishment of the World Design Organisation(“WDO”) on 29th June 1957. WDO was established to increase public awareness about the standards of industrial designs, facilitate training and education and cooperation between the industrial designers worldwide. This year will be the 65th anniversary of WDO and the theme of this years’ World Industrial Design Day will be “Let’s talk: Leadership”.
Protection and Enforcement of Industrial Designs
The following section contains a brief background on the protection and enforcement of industrial designs in prominent jurisdictions globally:
1.Enforcement in France
In France, a designer’s creation is protected ab initio, i.e. by the mere fact of its creation, by copyright. This protection is automatic, as long as the designer can demonstrate that he or she was the first person to create the graphic elements concerned.
The creation can then be protected on the French territory, after filing with the competent authority, which is the INPI[1], by design and model law, trademark law and patent law.
This dual protection (which is referred to as the ‘unity of art’ theory [2]) is due to the fact that designs are not only considered as industrial or craft objects but also as artistic objects. This dual protection can be useful abroad where copyright is not always recognised.
The person or legal entity who registers the design may subsequently grant a right of use, for example, by concluding a licence agreement.
2.Enforcement in Canada
Many corporations will, as a matter of regular course, consider the availability of and merits of seeking patent and/or trade-mark registration. However, one form of IP protection that is often overlooked, is an industrial design registration.
A design will be registered if it is filed in accordance with the Industrial Design Act (the “ IDA”) if the design is novel, if it was created by the applicant or the applicant’s predecessor in title, if the design “does not consist only of features that are dictated solely by a utilitarian function of the finished article”, and if the design is “not contrary to public morality or order”. On the topic of novelty, a design will be considered “novel” if there is a substantial difference between the new design and what had previously existed, in Canada or elsewhere, and has not been applied for in Canada or elsewhere more than 1 year before the priority date in the application. This particularity, known as a “grace period”, is specific to some countries while others simply don’t have it as it can be seen here :
| 12 Month Grace Period | 6 Month Grace Period | No Grace Period |
| Australia | Brazil | China |
| Canada | Hong Kong | |
| EU | India | |
| France | Iran | |
| Switzerland | Morocco | |
| Russia | ||
| Turkey | ||
| USA | ||
| UK | ||
| Japan | ||
| Korea |
The novelty threshold is higher than in copyright law but lower than in patent law. Unfortunately, the concept is not strictly defined by the IDA, but the courts have developed techniques for assessing similarities and differences between two designs, including that the designs must be examined separately and considered as a whole. It is not necessary that the concept, idea or expression be new, but rather that the combination of known designs creates a design that is new and substantially different from the prior art. Finally, the assessment of novelty remains a question of fact that depends on the nature and character of the design. While most countries have the same requirements, the holder should search the registrability requirements of the other countries they intend on designating in a Hague application.
3.Enforcement in India
Until the recent past, the classification of goods in respect of industrial designs in India was broadly (but not entirely) as per the Locarno classification. Owing to this ambiguity, some classes didn’t feature in the Indian industrial design classification system. Primarily, the effect of this ambiguity affected industrial design protection for Graphical User Interfaces (GUIs) since the specific class (for GUIs) didn’t feature in the Indian industrial design protection classification system. This provided room for confusion on whether GUIs would be eligible for protection under the Indian industrial design regime. However, in the recent past (in 2021), through an amendment to the Indian Designs Rules, the Locarno classification has been adopted as the official classification system for industrial designs. Subsequent to this development, there is an official recognition of Class 14-04 which pertains to Graphical User Interfaces (GUIs). It is expected that with this recognition, the Designs Office in India should witness a tremendous rise in applications for GUIs considering that India has a booming technological sector.
The objective of the Hague Agreement
The Hague Agreement of 1999 provides governing rules for the International Registration of Industrial Designs. The Hague Agreement has foreseen a ‘Hague System’ which allows the industrial designs to be registered and protected in the member countries. Pursuant to the Agreement, the member countries can file a single application with the World Intellectual Property Organisation (‘WIPO’), which can ease the process for industrial designers. The Industrial design application can be sent either to the office of WIPO or through the IP office of the contracting party of origin (‘party who has a connection with the applicant’).
The Applicant can file up to 100 designs which can act as protection licenses in all the member countries. It is relevant to note that the applicant is required to provide information about at least one contracting party. After the application is filed, a formal and substantive examination of the design will be carried out. If no issues are found then, the industrial design is registered and certification is provided for the same. The registered design has the protection of five years which can be renewed for two five-year periods.
A product sold in the market is a culmination of efforts by numerous stakeholders. An entrepreneur imagines the role of innovation and technology in his product. But the link between imagination and execution is often provided by an Industrial Designer.
Conclusion
Having said that, the global nature of the protection of industrial design rights necessitates that there is proper networking across jurisdictions between lawyers and law firms. Fact that protection against infringement of industrial design rights is needed in distinct jurisdictions, applicants would need to contact lawyers across such jurisdictions. Interlegal as an organization provides the necessary space to contact lawyers with the required expertise in an efficient manner.
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[1] Institut national de la propriété industrielle – The National Institute of Industrial Property
[2] https://www.inpi.fr/comprendre-la-propriete-intellectuelle/les-dessins-modeles/une-double-protection
Contributing Members
ODEON AVOCATS – Alexandre MEYRIEUX and Emeline Eraud
YULEX, avocats et stratèges, s.e.n.c.r.l. – Frederic Letendre
