Designs, an Introduction
The following information should be considered as a brief and simplified outline regarding design protection which is merely supplied for the convenience of our clients or potential clients. This information outlines general principles of design protection.
Whereas a patent confers generally wide protection for an invention, the protection afforded by a registered design is limited to the specific appearance of the article so registered. This protection does not extend to the underlying principle or the functional purpose of the article.
Design registration is particularly suitable for articles that are not new in their underlying concept, but which have been re-designed to give them a more striking or pleasing appearance or to make them more fit for the function they perform. Many products of industrial and other designers which, by their nature, may be unsuitable for patent protection can be effectively protected by design registration.
Whereas a patent is primarily intended to cover the conceptual features of an invention underlying potentially a range of embodiments, a design registration covers the form and outer appearance of an article. In certain cases, it is advisable to have parallel design and patent protection for an article. Barring these differences between patents and designs, many similarities do exist concerning the application and rights afforded to the proprietor in both cases.
2. Validity Requirements in General
As design laws are not universal, some discrepancies exist between the validity requirements for designs in different countries.
In general, to qualify for valid design protection, a design must be new and original and generally of a utilitarian nature, keeping in mind that valid designs are dependent on their visual appearances as judged solely by the eye.
A design is considered new if it does not significantly differ from known designs or combinations of known design features, i.e. the design differs from the state of the art. The state of the art comprises all matter available to the public, including prior design applications which have an earlier priority date. Thus, even if a design is new in a country in which protection is sought but is known elsewhere in the world, it will not be possible to obtain protection in that country. In view of the above requirement for a design to be new, it follows that a design must be kept absolutely secret until it has been included in a design application, otherwise the design will not be capable of being registered.
In connection with the above, we have to rely very largely on your information. However, the establishment of the existence of earlier design registrations and other aspects should be investigated by an experienced member of our staff. Although a good search may sometimes be expensive, it may save a person from wasting money eventually.
At least initially, we do not normally recommend that a search be conducted to determine whether or not a design is new or original. The reason herefore is that the costs of a search may outweigh the cost of filing a design application in a single country, especially one as relatively inexpensive to file in such as South Africa.
Furthermore, certain countries (such as South Africa) do not conduct an examination on the subject matter of a design application and will register a design as long as all the necessary paperwork has been submitted (however, the validity of such design can be attacked at any time by others).
However, if design protection in several foreign countries is contemplated, it may be prudent to instruct us to conduct an international design search prior to carrying out a program of design applications involving large expenses. This precaution is also recommended before investing heavily in somebody else’s design, before embarking upon expensive litigation against an alleged infringer, or before commercializing a design that may not be new or original.
4. Safeguards Against Infringement of Designs Held by Others
Similar to a patent, a design is a territorial right limited to the country in which the design has been registered. In general, the registration of a design gives the proprietor thereof the right (in the country concerned) to prevent third parties from making, selling or importing the articles bearing or embodying a design which is a copy, or substantially a copy, of the protected design when such acts are undertaken for commercial purposes.
The term of a design in most countries is 10 years, subject to the payment of annual renewal fees, but this term may vary from country to country.
5. Procedure for Obtaining Design Protection for Your Invention
The first step (for our South African clients) to obtaining design protection in several countries is normally the filing of a design application at the South African Designs Office.
Please click here for more information, in this respect.