Module 6

Question 1

What is “Design”?

Answer 1

Design is to design a design to produce a design

Question 2

What are the outcomes of Design?

Answer 2

1. They may relate to things.
2. They may relate to places and environments for a living, working, playing and learning.
3. They may also convey messages and enable communication and interaction.

Question 3

Which are kinds of designs protected under Intellectual Property?

Answer 3

registered, unregistered, design patent, orgamental design or model and as defined by a national law.

Question 4

Why is legal protection of Design important?

Answer 4

Legal protection of design is important to competitive economies, as it may play a reward and incentive function.

Question 5

What is the motive behind design protection?

Answer 5

When an industrial design is protected, the owner – the person or entity that has registered the design – is assured an exclusive right against unauthorized copying or imitation of the design by third parties.

Question 6

What does effective use of design contribute?

Answer 6

Effective use of design and its protection as industrial design will add value to a product and enhance the competitiveness and position of the business in the market. Many companies have successfully redefined their brand image through strong focus on product design.

Question 7

In the Samsung Case study, how is the design given importance?

Answer 7

In 1995, the company set up the Innovative Design Lab of Samsung, an in-house school where promising designers could study under experts from the Art Center College of Design in Pasadena, Calif., one of the top U.S. design schools. Samsung designers were dispatched to Egypt and India, Paris and Frankfurt, New York and Washington to tour museums, visit icons of modern architecture, and explore ruins. To make sure designers get heard, Samsung has created the post of chief design officer – something few other companies have bothered to do. And to make sure top executives attuned to the importance of the issue, CEO Yun holds quarterly design meetings where the chiefs of all the business units review new products and evaluate their designs.

Question 8

What are the sources of law for Design?

Answer 8

1. International
2. National
3. Regional

Question 9

What are the two International treaties adopted for the Design protection?

Answer 9

Paris convention of 1883 and the Berne Convention of 1886,

Question 10

When was the Hague Agreement for Design signed?

Answer 10

The Hague Agreement on the International Registration of Industrial Design - in 1925.

Question 11

What is the Role of IG of WIPO?

Answer 11

Under the IG’s of WIPO, some proposals with respect to further procedural harmonization of national design laws in a form of the design law treaty are discussed and elaborated.

Question 12

How does Paris Convention deal with Design?

Answer 12

It contains many important provisions related to design.

Question 13

What are the important provisions for the Design under the Paris Convention?

Answer 13

1. Art. 1(2) PC names «industrial designs» as a part of an industrial property
2. Art. 4.A(1) PC grants to all nationals of member States a right of priority.
3. Art. 5 PC states that «industrial designs shall be protected in all the countries of the Union.

Question 14

What are the important provisions for Design under the Berne Convention?

Answer 14

1. Art. 2(1) BC includes «works of applied art» within the broader category of «literary and artistic works» to which the Convention applies.
2. Art. 2(6) BC states that «the works mentioned in this Article shall enjoy protection in all countries of the Union»,
3. Art. 2(7) BC authorizes member States to establish freely the extent of the application of their laws to works of applied art and industrial designs and models, as well as the conditions under which such works, designs and models shall be protected

Question 15

What is the contrary effect of art 2(7) of the Berne Convention?

Answer 15

To the contrary, if a member State denies copyright protection to industrial designs and protects them exclusively through a special regime, its own nationals may not receive copyright protection abroad (just like they don’t receive it in their homeland).

Question 16

How many times the Hague Agreement is signed?

Answer 16

The Hague Agreement Concerning the International Registration of Industrial Designs has been signed on November 6, 1925 and has been revised several times. Three Acts of the Hague Agreement are currently in force: the 1999 Act, the 1960 Act and the 1934 Act.

Question 17

Who administers the Hague Agreement?

Answer 17

The Agreement is administered by the International Bureau of WIPO, in Geneva, and so far 60 countries adhered to one of its three Acts.

Question 18

How does the Hague system work?

Answer 18

The Hague system works very much like the Madrid system for trademarks. In short, it offers the owner of an industrial design a means of obtaining protection in several countries (up to all countries which have signed the HA) by simply filing one application with the International Bureau of WIPO, in one language, with one set of fees in one currency (Swiss Francs).

Question 19

Is filing an international application under the Hague Agreement open to everyone?

Answer 19

The possibility of filing an international application under the Hague Agreement is not open to everyone. To be entitled to file such an application, an applicant must satisfy one, at least, of the following conditions: be a national of a State party to the Hague Agreement, or have a domicile in a State party to the Hague Agreement, or have an habitual residence in a State party to the Hague Agreement, or have a real and effective industrial or commercial establishment in the territory of a State party to the Hague Agreement.

Question 20

What are the options available for the applicant to file an international application under the Hague Agreement?

Answer 20

The international application must be filed in either English or French (at the applicant’s option) on an official form.

Question 21

What is the role of WIPO under the Hague Agreement?

Answer 21

It must also be stressed that WIPO does not appraise or concern itself in any way with the novelty of the design and it is therefore not entitled to reject an international application on this, or any other, substantive ground. Substantive examination falls within the exclusive competence of the Office of each designated country.

Question 22

How are photographs or other graphic representations of the designs submitted by the applicant?

Answer 22

The photographs or other graphic representations of the designs submitted by the applicant are published in the International Designs Bulletin, which is issued monthly via CD-ROMs and the internet.

Question 23

What are the terms of the refusal of protection of Design under the Hague Agreement?

Answer 23

Each Contracting Party designated by the applicant may refuse protection within six months, or possibly 12 months under the 1999 Act, from the date of the publication of the international registration.

Question 24

What is the term for protection of Design under the Hague Agreement?

Answer 24

The term of protection is five years, renewable for at least one five-year period under the 1960 Act, or two such periods under the 1999 Act. If the legislation of a Contracting Party provides for a longer term of protection, protection of the same duration shall, on the basis of the international registration and its renewals, be granted in that Contracting Party to designs which have been the subject of an international registration.

Question 25

How do industrial designs fall within the concept of intellectual property under the TRIPS Agreement?

Answer 25

Art. 1(2) TRIPS, industrial designs fall within the concept of «intellectual property» adopted by the agreement itself.

Question 26

What are the relevant provisions under TRIPs agreement for the Design Protection?

Answer 26

1. Art. 2(1) TRIPS states that member States of WTO «shall comply with Articles 1 through 12, and Article 19, of the Paris Convention (1967)
2. the right of priority established by Art. 4
3. PC and the minimum of protection provided for by Art. 5

Question 27

Is the term “industrial design” defined in either PC or the TRIPS agreement?

Answer 27

Art. 5 PC says only that «industrial designs shall be protected in all the countries of the Union», without telling what an industrial design is and how it has to be protected. The TRIPS Agreement goes further and introduces a few criteria that member States must respect, while leaving them a considerable amount of residual freedom.

Question 28

How are state members required to protect for Design under TRIPs Agreement?

Answer 28

Firstly, member States are required to protect «industrial designs»; at the same time, they remain free to exclude «designs dictated essentially by technical or functional considerations» (Srt. 25(1) TRIPS)

Secondly, member States remain free to choose the legal mean to protect such industrial designs. Therefore, copyright law, design patents, or a sui generis regime are all viable alternatives.

Thirdly, member States have to protect «independently created industrial designs that are new or original.

Fourthly, Srt. 26 TRIPS describes the content and duration (minimum ten years) of the protection that has to be granted by each member State.

Lastly, art. 25(2) TRIPS contains a provision which relates only to textile designs.

Question 29

Howdo the Regional laws protect Design?

Answer 29

For Example- The Regulation on the European Union Trademarks (but differently from the Madrid system for trademarks and the Hague system for designs), this law establishes a unitary intellectual property right (a «Community design») which has effects on the entire territory of the European Union.

Question 30

What are the rights of Design protection as provided by EU regulation ?

Answer 30

The EU regulation provides two different rights: a «registered Community design right» and an «unregistered community design right». In both cases, a design can be protected if it is new and has an individual character.

Question 31

How can registered Community design and unregistered Community design be obtained?

Answer 31

A «registered Community design» can be obtained through an application addressed at the European Union Intellectual Property Office (EUIPO, formerly OHIM), which is based in Alicante, Spain. To the contrary, an «unregistered Community design» arises automatically, as a legal consequence of the disclosure of the design to the public within the European Union.

Question 32

What is the grace Period for a registered design?

Answer 32

It is possible to file an application for a registered design which has already been disclosed to the public, if the application is made within one year from disclosure.

Question 33

What is the duration of legal protection prescribed by the regional laws?

Answer 33

To name just a couple, the legal protection lasts longer (up to twenty-five years instead of three) and is wider (it covers not only deliberate copying, but also the independent development of a similar design).

Question 34

What are other rights available with the owner of New Design?

Answer 34

The owner of a new design can protect it in Europe in various ways: he can rely on unregistered or registered Community designs; but he can also file an application for a national registered design in every member State where he plans to sell his products; or he can invoke copyright protection (taking into account in this case that, even if such protection is available in all member States, the conditions under which it can be obtained may vary from country to country).

Question 35

How do national laws differ from the International Laws for Design Protection?

Answer 35

National laws tend to differ from one another as long as industrial design protection is concerned. This is a consequence of the lack of substantial harmonization at the international level. The Paris Convention only mandates for protection of industrial designs; while the TRIPS Agreement contains very flexible rules, which sets few limits to national legislators.

Question 36

Is registration for industrial design mandatory as per the national laws?

Answer 36

Many countries protect industrial designs as a separate object of intellectual property. In such cases, national laws dealing with industrial designs may require registration or not.

Question 37

Where is the Industrial Design protected as work of art?

Answer 37

Depending on the particular national law and the kind of design, an industrial design may also be protected as a work of art under copyright law.

Question 38

How are industrial design and copyright protection mutually exclusive?

Answer 38

In other countries, industrial design and copyright protection are mutually exclusive: once the owner chooses one kind of protection, he can no longer invoke the other or, at least, he cannot receive a broader protection under the other (this however is not accepted in the EU countries, as it would contradict the principle of cumulative protection of designs stipulated in Art. 17 of the European Union Directive on the legal protection of designs).