Design is defined as the only form, shape, outline, pattern, ornament applied to each article. This article can be in any form whether two dimensional, three dimensional or both. Any process of industry in which the design is applied on the article.

An industrial design right is a property right that safeguards the visual design of things that are not simply useful[i]. An industrial design comprises of the creation of a shape, configuration or composition of pattern or color, or combination of pattern and color three-dimensional form comprising artistic value. An industrial design is often a two- or three-dimensional configuration want to produce a product, industrial commodity, or handicraft.

Under The Hague Agreement Concerning the International Deposit of commercial Designs, a WIPO-governing treaty, a process for a world registration exists[ii]. To succeed in registration process, the state laws of most member countries of WIPO require the design to be new. An applicant can file for one international deposit with WIPO or with the national office in a nation party to the treaty. In any number of chosen nations, the design can then be safeguarded. Design rights started within the UK in 1787 with the Designing and Printing of Linen Act and have prolonged from there. Registering for an industrial design right is said to be granted as a patent.

In Australia, the term of design registration is 5 years. It can be extended for an additional 5 years. For the grant of patent registration, the applicant is required to give a formality exam. To protect the design from infringement, a substantive exam must be given to make design certified.

Importance of Registration and Checklist to Qualify

Registration is essential to safeguard your design from infringement. This is vital if the design is to be created in bulk and have a marketable or industrial use. A design should be novel and able to be distinguished from the already existing ones. It is also known as prior art base, which involves designs which enjoy publicity. There are known to the audience as are put out in a document both within the nation and in abroad. If the design fulfil the criteria prescribed of newness and distinction. It can file an application to the Designs office of IP Australia, the sole authority to register IP and its related aspects. The applications of designs which are accepted will be published by the Australian Designs Data Searching and the Official Journal of Designs.

Rights of Owner[iii]

When the design is successfully registered, the owner has got rights to control the design and its usage in the products, within the term of registration. The owner has got the right to-

• Make or offer to make a product, for which the design is registered.
• Use for the purpose of trade or business, import product in Australia
• Sell or hire
• To authorise another person to use, sell, hire etc.

Assignment of interest in a design[iv]

• The registered design can be assigned by the owner in writing.
• Assignor and assignee can sign the assignment agreement.
• Assignment may be for a specific place.

Entitlement to Registration[v]

• The creator of the design
• The other individual or Joint Creator, If the design is created in the course of employment with other individual.
• The legal representative of any individual above mentioned.

An individual is not allowed to be entered on the register of designs as the registered owner. Such individual has assigned all its rights in that design to another individual. Such individual’s rights have been transferred by operation of law. More than one individual’s name can be entered in the register as the rightful owner. No individual other than mentioned above are allowed by law to be entered in the register of owners. As a registered owner action can be taken to enforce these rights against those infringing your design. This action is available only when the design has been registered with the authorities and certified by the Registrar.

Ceasing of Registration[vi]

If at the time of registration, a registered design, an equivalent design in relation to artistic work. Which is registered under the Copyright Act 1968 and the design would not have been registered.

Otherwise than under section 18 and the copyright in the artistic work expires prior to the date on. Which registration of design would cease to be in force. The registration will not be extended. Further. It will expire when the registration of copyright ceases.

Certain cases which do not lead to Infringement[vii]

Some cases do not amount to infringement. An individual does not infringe a design if, the individual uses, hires, authorize another individual to use a product for which the design is registered and which symbolizes a design which is similar to or considerably similar in general impression to the registered design. If the product is a connected element of a multifarious product. The usage or authorization is for the purpose of the reparation of the multifarious product so as to reinstate its whole appearance partially or wholly. The use or authorisation did not infringe the registered design; the registered owner of the design accepts the burden of proving that the person knew, or would reasonably have known, that the use or authorisation was not for the purpose mentioned above.

In Honda Giken Kogyo Kabushiki Kaisha v. Allied Pacific Motor[viii], Honda claimed for infringement of its designs by the defendant Comel Manja JMP. The tribunal held that the newness requirement is territorial. Due to this, an earlier revelation of designs outside the borders of Malaysia is inappropriate.

A restoration is taken so as to reinstate the whole appearance of a multifarious product wholly if the complete appearance of the multifaceted product immediately after the repair is not materially altered from its original whole appearance; and a repair is taken to be so as to restore the total appearance of a complex product in part if any material contrasting between: the actual total appearance of the complex product; and the actual appearance of the complex product immediately after the overhaul; is exclusively attributable to the fact that only part of the multifaceted product that has been restored. A tribunal must apply the standard of the informed user.

Reparation in relation to a multifaceted product, includes the following: Reinstating a destroyed or damaged component part of the multifaceted product to a good or sound condition; replacing a destroyed or damaged component part of the multifaceted product with a component part in good or working condition certainly replacing accompanying items when reinstating or swapping a destroyed or damaged connected part of the complex product working out maintenance on the multifaceted product.

Standard of the informed user implies, in relation to the total appearance of a multifaceted product, means the standard of an individual who is familiar with the multifaceted product, or with products similar to that product. Usage in relation to a product, means: to make or offer to make the product for importation of the product into Australia for sale, or for use for the other connected purposes of any trade or business; or to sell, hire or otherwise dispose of, or offer to sell, hire or otherwise dispose of, the product; or to use the product in any other way for the purposes of any trade or business; or to keep the product for the purpose of doing any of the things mentioned above.

Frequently Asked Questions

What are designs?

Design is defined as the only form, shape, outline, pattern, ornament applied to each article. This article can be in any form whether two dimensional, three dimensional or both. Any process of industry in which the design is applied on the article.

What is the term of registration of design?

The term of protection of design right is territorial i.e. it depends upon nation to nation. In India the design owner enjoys protection for a period of ten years and after that it can be extended for a period of five years. In Australia, the term is of five years and after its expiry can be extended.

Reference

[i] En.m.wikipedia.org

[ii] Ibid

[iii] www.legislation.gov.au

[iv] Ibid

[v] Ibid

[vi] Ibid

[vii] Ibid

[viii] Indira Gandhi National Open University School of Law, Industrial Designs, October 2019