Policies Promoting IP Development in Universities and

Report
“Looking
Good” – The Appeal of
Designs in Getting Noticed by the
Customer
Mboya Rose
Dar-es-Salaam, Tanzania
22nd to 26th , August, 2011
Contents
Introduction to Intellectual Property
Industrial designs and Business
Strategy
Registration of IDs
Other legal instruments for
protecting industrial designs
Objectives
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Differentiate the various types of IPRs
Identify economic importance of
Industrial designs
Ways of protecting ID
Other legal Instruments for protecting
ID
1.
Introduction to Intellectual
Property Rights
1. Types of Property

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What is property?
 Something owned - any tangible or intangible
possession that is owned by someone.
Types of Property

Tangible

Intangible
Intangible:- invisible, exist only as rights of
ownership
 Intellectual
For a long time people have been heavily relying on
Tangible Property
The disadvantage is that they diminish with time,
land cannot be expanded
1.Introduction to Intellectual Property Rights
2.
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What is intellectual Property
Intellectual property are creations of
the mind that can be protected by law.
These are a group of properties that are
intangible
As people move from the resource
based economy to knowledge based
economy, intellectual property plays a
very vital role.
1. Introduction to Intellectual Property
Rights
3. Types of IP Rights
Intellectual Property
Copy
Rights
Patent
Industrial
Property
Utility
Model
Industrial
Design
Plant Breeders
Rights
Trademarks
2. Industrial Design and
Business Strategy

i) What is an Industrial Design?
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The ornamental or aesthetic features of a
product. In other words, it refers only to the
appearance of a product and NOT the technical
or functional aspects.
Any composition of lines or colour or any three
dimensional form whether or not associated
with lines or colours; provided that such forms
or composition gives a special appearance to a
product of industry or handicraft and can serve
as a pattern for a product of industry or
handicraft
Industrial designs

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Industrial designs is relevant to a wide variety
of products of industry, fashion and
handcrafts from technical and medical
instruments to watches, jewelry, from house
holds products, furniture and electrical
appliances to cars and architectural
structures, textile.
Industrial design is also important in relation
to packaging containers and get up of
products.
Industrial designs

For businesses, designing a product
generally implies developing the
product’s functional and aesthetic
features taking into consideration issues
of manufacturing or the ease of
transport, storage repair and disposal
Two dimensional designs
Three Dimensional design
Examples of Industrial Designs
ii) Importance of Industrial Designs in
Business
Enterprises devote a lot of time and resources
to enhance the design appeal of their
products. New and original designs are often
created to appeal to the market needs
 Customize products to appeal to specific market
segments
 Small modifications to the design of some
products e.g watch, may make them suitable for
different age groups, cultures or social groups
 Create a new niche market.
In a competitive market place, many companies seek
to create a niche market by introducing creative
designs for their products to differentiate them
from those of their competitors

Importance of Industrial Designs in Business
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Strengthen their brands images.
Creative design are often combined with
distinctive trademarks to enhance the
distinctiveness of a company’s brand (s).
Many companies have successfully created
or redefined their brand image through a
strong focus on product design
It adds value to a product.
Importance of ID

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While the functional elements of a bottle do
not generally differ significantly from products
to products. its appearance is likely to be one
of the major determinants of success in the
marketplace.
This is why industrial design registers in many
countries have along list of designs for simple
products such as bottles
iii)
Why protect ID
Strengthening competitive edge
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The creator is granted the exclusive right to prevent others
from unauthorized copying, imitating, making, selling, or
importing any product in which the design is incorporated
or to which it is applied and thereby strengthen your
competitive advantage
Return on investment
Registering a valuable designs contributes to
obtaining a fair return on investment made in
creating and marketing the relevant product, thereby
improving your profit
Why protect IDs
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Revenue generation
Registered design may be licensed (or
sold) - Industrial design may be assigned,
licensed, mortgaged or transferred, enter
markets that you are otherwise unable to
serve.
Encourages fair competition and honest
trade practices which in turn, promote the
production of a diverse range of aesthetically
attractive products
Why protect IDs
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Business asset increasing commercial value
of a company and its products –the more
successful a design the higher the value is to
the company
Industrial design forms part of the fixed
assets of a company.
A protected design may also be licensed or
sold to others for a fee. Through this you
may be able to generate more revenues
iv) Integrating Design protection
into broader business strategy
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Decisions on how, when and where to protect
a company’s industrial designs may have an
important impact on other areas of design
management.
It is important to integrate issues of design
protection into the broader business strategy
of an enterprise. For example the cost of
protection, the effectiveness of protection and
issues of ownership of designs, may be
important considerations when deciding:
Integrating Design protection into
broader business strategy
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Whether to undertake a design development
in house or to commission an outside agency
The timing of the initial use of a new design
in advertising, marketing or public display in
an exhibition
Which export markets to target
If, when and how to license or assign a
design to be commercially exploited by other
companies in return for economic
remuneration
a)
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Who owns a design
The creator of a design is usually the
first owner of the design, unless there
are special circumstances:
Employee
Commissioned work
However the designer of a product may
have automatic copyright protection of
the drawings of the original design
3. Registration of an Industrial
Design
i) Basic requirements for registration
a)
The design must be new or Original.
independently created by the designer and is
not a copy or an imitation of existing designs
 An industrial design is deemed to be new if it
has not been disclosed to the public,
anywhere in the world, by publication in
tangible form or, in Kenya by use or any other
way prior to filing date or where applicable to
the priority date of the application for
registration.
Requirement for registration cont..
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It may involve whether there is an
examination or not as to the form and
substance of the application for the
registration of the design, especially to
determine novelty or originality.
novelty or originality may differ from country
to country,
In most countries an Industrial Design must
be registered in order to be protected under
industrial design law.
registration process itself varies from country
to country.
Absolute/universal novelty
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Requirement of novelty is found in all laws, however
the nature of the novelty differs amongst the laws of
various countries.
Absolute novelty
The design must be new as against all other designs
produced in all other parts of the world at any
previous time and disclosed by any tangible or oral
means
Universal novelty
On the other hand, a qualified standard of novelty is
sometimes required.
Requirement for registration cont..
b) Industrial application
 An industrial design must be capable of
being reproduced by industrial
 means (industrial application).
 Also it must be possible to apply an
industrial design to an article which
may be either two-dimensional or threedimensional.
Requirements for registration cont..
c) Must have individual character. If the overall
impression produced by the design on an
informed user differs from the overall
impression produced on such a user by any
earlier design which has been made available
to the public.
 Features of appearance which are dictated
essentially by technical or functional
considerations are not protectable
 Some offices register designs based on
formality others like Kenya do substantive
examination to check the existing designs on
the register for novelty or originality
ii)
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Registration of many designs
In some countries (Kenya) you may apply for
registration of many designs (10,50) through a single
application as long as they are all related to the same
product or class of products under international
classification or to the same set or composition of
articles
If you have designed a set of chairs, tables and
dressers and would like to protect them, many
countries would allow you to file a single application
covering all of them paying only one single fee as
they all belong to the same class of products,
Registration of many designs cont..
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Generally although fees are charged for each
additional design, they are significantly less
than the cost of filing a separate application
for each design
In some countries however you may have to
file a separate application for each design.
Many of this countries while limiting an
application to a single design, permit several
variants of that design; others allow for an
exception to the single design rule when all
the designs relate to a set of articles
iv) Registration of variant designs
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Variants would include for example
two earings, which differ in that
one is a clip-on and the other is for
pierced ears.
To be considered variants, the
design must be applied to the same
article and must not differ
substantially from one another.
v) Industrial Design Registration
Process
Formality
Examination
Application
Publication
Registration
Novelty
Examination
Opposition
period
vi) Rights provided by design
protection
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When an ID is protected by registration, the
owner is granted the right to prevent
unauthorized copying or imitation by third
parties. This include the right to exclude
others from making, offering, importing,
exporting or selling any products in which the
design is incorporated or to which it is
applied.
The law offers the creator of an industrial
design or his successors the exclusive right to
sell or cause to be sold for commercial or
industrial purposes the goods in which the
design is incorporated
Vii) Deferment of publication
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Once a design is registered it is entered into
the design register and published.
In some countries/regions (not applicable to
Kenya), it may be possible to request
deferment of publication in which case the
design will be kept secret for a certain period
specified by the relevant law.
Preventing publication for a period of time
may be preferable for strategic business
reasons
viii) Protection of unregistered
designs
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For some countries or common economic
areas such as the European Union, it possible
to obtain limited industrial designs protection
for unregistered designs for three years from
the date on which the design has been
published in the European Union.
The unregistered designs provides companies
with the opportunities to test market their
products before going through the efforts and
expense of registering designs. Many of
which may succeed in the market
ix) International classification
system
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Classification according to the Locarno
Agreement Establishing an International
Classification for Industrial Designs
(Kenya uses this system)
Tanzania
x)
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Protecting designs abroad
If company intends to export products bearing an
original designs or intends to license the
manufacture, sale or export of such products to other
firms in foreign countries it is important to protect
the design in those countries
How do you protect
ID protection is territorial , thus limited to the country
where protection is sort
There is a grace period of six months from the time
on which you applied for protection in the first
country to claim right of priority when you apply for
design protection in other countries. Once this period
has elapsed, you will not be able to protect in those
countries
Ways of protecting
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National route
Applying separately to the national IP Offices of each
country where protection is sort
This is very cumbersome and expensive as
translation into the national languages is generally
required as well as payment of administrative (legal
fees)
Regional Route
if interested in a group of countries which are
members of regional agreements e.g ARIPO, OAPI,
Benelux Designs Office BDO for protection in
Belgium, the Netherlands and Luxembourg
International route

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Companies interested to register their designs in
many countries may also use the procedures offered
by the Hague Agreement Concerning the
International Deposits of Industrial Designs, a WIPO
administered treaty.
An applicant from a member country to the Hague
Agreement can file a single international application
with WIPO. The design will then be protected in as
many member countries as designated
This method is simple and cheaper
The cost of protection varies depending on the
number of designs to be protected and the number
of countries where protection is sought
xi)
Hague Union Members: 48
Armenia, Albania, Belgium, Belize, Benin, Botswana,
Bulgaria, Côte d’Ivoire, Croatia, D.P.R. of Korea, Egypt,
Estonia, European Community, France, Gabon, Georgia,
Germany, Greece, Hungary, Iceland, Indonesia, Italy,
Kyrgyzstan, Latvia, Liechtenstein, Luxembourg, Mali,
Moldova, Monaco, Mongolia, Montenegro, Morocco,
Namibia, Netherlands, Niger, Romania, Senegal, Serbia,
Singapore, Slovenia, Spain, Suriname Syrian Arab
Republic, Switzerland, The former Y.R. of Macedonia,
Tunisia Turkey, Ukraine (48)
Kenya and Tanzania not members
xii) Duration
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Industrial designs protection generally lasts
for a period that varies between 10 and 25
years depending on the country where
protection is sought
In Kenya it is a maximum of 15 yrs
ID may not always be adequate for products
that are linked to passing trends e.g fashion
products
Copyright protection is for 50 to 70yrs
depending with the laws of the country
IDs.: National examples of
Maximum Duration of Protection
10
12
14
15
years:
years:
years:
years:
Australia, Canada, China
Taiwan
United States of America
Benin, Brazil, Egypt, Japan,
Singapore, Russia, Ukraine
25 years: Bulgaria, France, Germany,
Italy,
Romania, Switzerland, Turkey
50 years: Monaco
4) Other legal instruments for
protecting industrial designs
Differences between copyright protection and
industrial design protection for designs
 In some countries the applicable laws allows
for protection of ID as copyright for example
in the design of textile and fabrics.
 In many countries you may obtain cumulative
protection (copyright protection and ID
protection) which can exist concurrently for
the same design,
 While in a few countries, the two forms of
protection are mutually exclusive
a) Protection of ID as Copyrights

What is Copyright?
 Simply is “the right to make copies”
 Copyright protection subsist in any original
works of art and authorship once fixed in any
tangible medium of expression, from which
they can be perceived, reproduced, or otherwise
communicated, either directly or with the aid of
a machine or device
 Copyright only extent as much to the
expressions of and NOT to the underlying
ideas or facts.
Copyright/ID protection of IDs
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Registration
Under ID law the ID generally needs to be
registered by the applicant before publication
or public use anywhere, or at least the
country where protections claimed
The registration certificate provided by the
protection is useful incase of infringement
and provides a solid basis from which you
may enforce your exclusive rights
Copyright/ID protection of IDs
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Copyright works considered to be original
subsists without formalities
While registration is not necessary for
protection, copyright depositories exist in
some countries where you may deposit your
design and obtain certificate
In Kenya the design must not have been in
the disclosure for more than 6 months before
filing
Scope of protection

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ID laws the right conferred by registration of
ID is an absolute right in the sense that there
is infringement whether or not there has
been deliberate copying
To enforce rights under copyright law, the
copyright owner must prove that the
allegedly infringing works is a direct
reproduction of the work protected by
copyright law
Costs

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Registering your designs in the countries you
are interested in means that you have to pay
the applicable fees.
You may also require services of IP Agent to
draft the application
In copyright given that no formal registration
of works protected by copyright is required by
most countries there are generally no direct
costs relating to copyright protection,
however there may be costs related to the
deposit of the work, in countries where it
exists
Demonstrating proof of ownership in case of
disputes
b) When can trademark law
protect a design

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A trademark is a distinctive sign generally a
word, a logo or a
combination of the
two) used to
differentiate the
products of one
company from
those of others
There are instances
where the form,
design or packaging
of a given product
may be considered
to be a distinctive
feature of a product
in question and
may be protectable
as a three
dimensional
trademark.
Protection of ID as Trademarks
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The bottle of the coca cola or the
triangular shape of the toblerone
chocolate bar are some examples
Trademark protection has the
advantage of being renewable
indefinitely
The cost of protecting a design as a
trademarks differs from those of a
trademark
c) Protection under the laws of
unfair competition
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
In many countries IDs are often protected
under the laws on unfair competition. Thus a
design may be protected against acts of
unfair competition including, in particular,
slavish copying and acts that may lead to
confusion, acts of imitation or use of third
parties reputation
However protection under unfair competition
is generally significantly weaker and
infringement is more difficult to prove. Kenya
is yet to enact a law on unfair competition
THANK YOU FOR YOUR
ATTENTION!

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