INDUSTRIAL DESIGN LAW AND PRACTICE .

By

Mrs Grace Issahaque .

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Industrial Designs Law : Prepared By Grace Issahaque.

Introduction to Industrial Design Law.

The emergence of protection for industrial designs is intimately connected with
the growth of industrialization and the method of mass production. The system
of registration of designs has been around since the 20th Century. The initial
demand for a registration system came from the textile industry.
In the United Kingdom, the first law giving protection to industrial designs was
the Designing and Printing of Linens, Cotton, Calicoes, and Muslins Act of
1787, which provided protection over a period of two months to ‘every person
who shall invent, design and print, or cause to be invented, designed and printed
and become the proprietor of any new and original pattern or patterns for
printing Linens, Cottons, Calicoes, or Muslins’. This was a clear recognition of
the contribution and importance of designs in the growing textile industries.
With the expansion of industrialization and the possible application of methods
of mass production to other areas of manufacture, design protection gradually
moved to other fields of endeavor covering goods such as pottery and porcelain
industry which finally culminated in the Designs Act of 1842 which provided
protection to ‘any new and original design whether such design be applicable to
the ornamenting of any article of manufacture.

In France the Law on design protection was enacted in 1793 for Literary and
Artistic Property and with the growth of the textile industries a special law
dealing with industrial designs was passed in 1806. This law established a
Council that was responsible for receiving deposits of designs and for regulating
disputes between manufacturers concerning designs. The law initially covered
the silk industry in Lyon and with time was extended to other cities and to two
dimensional and three dimensional designs in all areas of industry.

Ghana as a British colony extended protection for designs under the United
Kingdom Designs Protection Ordinance (Cap 182) and subsequently passed the
Textile Designs (Registration) Decree 1973(N.R.C.D 213) as a result of our
connections with the United Kingdom as a colony the law adopted in essence
the design law in UK passed in 1949. Then in 2003 in compliance with
Ghana’s obligation under the World Trade Organization(WTO) Trade Related
Aspects of Intellectual Property Rights (TRIPS) Agreement, the Textile design
Decree was repealed and a new law was passed, The Industrial Designs Act
(Act 660) which expanded the scope of protection to cover both textile and all
designs in industry.
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An industrial design in a general sense deals with the creative activity of
achieving an ornamental appearance for mass – produced items which within
the available cost constraints, satisfies both the need for the item to appeal to
potential consumers and also perform its intended function efficiently. In the
legal sense an industrial design refers to the right that is granted in many
countries in accordance with a registration system to protect the original
ornamentation and non- functional features of an industrial article or product
that result from an industrial activity.
Visual appeal plays an important role in influencing the decision of consumers
to prefer one product over the other especially in areas where a range of
products performing the same function is available in the market. In instances
of function where technical performance of the various products offered by
different manufacturers are relatively equal, aesthetic appeal along with cost
will determine the consumer’s choice.

What is an industrial Design?

An industrial design is the ornamental or aesthetic aspect of an article. An
industrial design may consist of three-dimensional features, such as the shape or
surface of an article, or of two-dimensional features, such as patterns, lines or
color.

Section 1 of Industrial Designs Act, Act 660, 2003 as amended defines

industrial designs. Under Section 1 the subject matter of protection of
industrial designs is not the articles or products but rather the design which is
applied to products or articles. The proprietor of a design is given the exclusive
rights to such products or articles that embody the protected design. The
protection given for industrial designs is not meant to prevent other
manufacturers in producing or dealing with similar products that fulfill the same
utility function, provided that such an article do not embody or reproduce the
protected design.

The idea that constitutes the design may be something which can be expressed
either two dimensionally or three dimensionally. The United Kingdom’s
Copyright , Designs and Patents Act 1988 and the Designs Law of Japan , Law
125 of 1959 as amended all refers to design as meaning ‘the shape , pattern , or
colour or a combination of these in an article.

The purpose of industrial design protection is the stimulation of the design

element of production and a common feature that runs through industrial design
laws is that the design can be protected only if the design is capable of being
used in industry, or in respect of articles produced on large scale. It is of interest
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to note that the requirement that a design must be applied to utilitarian articles
in order to be protected is one of the principal matters that distinguishes the
objectives of industrial designs protection from copyright. This requirement is
variously expressed in different laws , in Ghana the law extend protection to
designs ‘ for product of industry or handicraft’ and in the Design law of Japan
the words used are ‘ capable of being used in industry.

Industrial designs are applied to a wide variety of products of industry and

handicraft: from technical and medical instruments to watches, jewelry, and
other luxury items; from housewares and electrical appliances to vehicles and
architectural structures; and from textile to leisure goods.

Exclusions from Registration

Article 25.1 of the Trade Related Aspect of Intellectual Property (TRIPS)

Agreement provides that Members of the WTO may provide that Industrial
design protection shall not extend to designs dictated essentially by technical or
functional considerations. Under Section 1(2) of Act 660, Industrial Designs
Act, the requirement for design protection dealing with the appearance only is
clearly stated. This is due to the fact that many articles which design are applied
to are not themselves novel and are produced by a large number of different
manufacturers such as belts, shoes, cutlery among many others.

(Photo: Procter & Gamble)

In Procter & Gamble Co .v. Reckitt Benckiser UK [2008] FSR 8. , the Court
of Appeal had this to say that the “informed user was more discriminating. He
would be aware of the existing design corpus and would be aware that some
designs were required to be the way they are because of function”. Design
registration cannot protect designs where the appearance of the product design
is set because of its technical function. Consequently in Koninklijke Phillips
Electronics NV. v. Remington Consumer Products ( 2002) ECR 1- 5473, it
was held that technical function of a design is excluded from design law.

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Design protection is not granted to a design which must be reproduced in an
exact form and dimensions in order to allow the product to perform its function
or where the design goes against public policy or accepted principles of public
morality or where a design incorporates a foreign flag or protected symbol, then
the applicant will have to get permission from the country concerned.

Requirement of Registrability?

Industrial design protection which is through registration is granted only to

designs that are new or original or have individual character. The novelty of the
design constitutes the basis for the grant of a reward to the originator or creator.
The requirement of novelty is found in all laws however the nature of novelty
which is required as a condition of protection differs amongst laws of different
countries. The novelty required is sometimes absolute or universal, which
implies that the design for which registration is sought must be new against all
other designs produced in all other parts of the world at any previous time and
disclosed by tangible or oral means. On the other hand a qualified standard of
novelty may be used which may relate to time or a territory.

Where a design is applied to a product which is component of a complex

product , it will be protected only if it remains visible in normal use and the
visible features are new and have individual character . As a result the design of
under the bonnet parts such as a car engine or radiator are not protected. To
qualify as new no identical design must not have been made available to the
public before the relevant date of application this is clearly specified under
Section 2 (2) and (3) of Act 660. In Carflow Products Ltd. v. Linwood
Securities [1999] FSR 424. The defendant who had come up with a steering
wheel lock designs for cars on its own was sued by the plaintiff who had earlier
shown a prototype of an identical or similar design to a buyer. It was held by
Jacob J that there was no evidence of copying and as such defendant was not
liable for infringement. A design is considered to be identical if it features
differ in immaterial details. In Crown Confectionery Co Ltd’s Design,(OHIM
No ICD000000388) a design to be applied to pretzel – shaped biscuits was held
invalid as it did not differ from the familiar and well known shape of pretzels
except in immaterial details. The design had some lines across the surface of
the pretzel . In Homeland Housewares LLC’s Design (OHIM No
ICD00000552) the design for a transparent cup used in a bowl mixer , was
identified to be identical to another design as no apparent differences could be
shown on close inspection of the product.

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In determining whether a design is original or has individual character, the
degree of freedom the designer has in developing the design is taken into
consideration. Also Section 2 (3) provides for a 12 month period of grace and
certain disclosures do not prejudice novelty/ newness or individual character.
The period starts twelve months prior to the filing date of the application or
priority date where applicable.
It is important to note that in most countries, an industrial design must be
registered in order to be protected under industrial design law. Depending on
the particular national law and the kind of design, an industrial design may also
be protected as an unregistered design or as a work of art under copyright law.
In some countries, industrial design and copyright protection can exist
concurrently. In other countries, they are mutually exclusive: meaning that once
the owner chooses one kind of protection, he can no longer invoke the other.

Under certain circumstances an industrial design may also be eligible for

protection under unfair competition law, although the conditions of protection
and the rights and remedies ensured can be significantly different.

Rights in Industrial Designs

The right to legal protection in respect of a design belongs to the creator of the
industrial design under Section 3 of Act 660. The rights which are accorded the
proprietor of a registered design emphasize the essential purpose of design law
in promoting and protecting the design element in industrial production.
Industrial design law accords the creator the exclusive right to prevent the
unauthorised exploitation of the designed articles or products. It is a total right
of ownership to the appearance of a product or part of a product.

A registered design gives you the exclusive right to use the design and any
similar design. Using the design includes: making, offering, selling, importing
or exporting a product to which the design has been applied; stocking a product
for those purposes; or letting others use the design under agreed terms with you
as the registered owner.

Application and Registration.

Industrial design protection is usually granted pursuant to a procedure for the

registration of such designs. The owner must apply to the Designs registry with
the requisite documentation of drawings and representations, which will be
subjected to an examination to ensure that it meets the formal requirement as

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imposed by Act 660 under Section 5, information identifying the applicant and
an indication of the product in which the design is intended to be tp be
incorporated .The applicant is required to give brief description explaining the
representation or drawing and provide information in respect of the relevant
classification of products under the Locarno classification The application
should be accompanied by the fees. Section 1(2) states that features of
appearance or design that are dictated solely by technical functions are
excluded from protection.

The date of filing is the date the application is filed with the Registry. Under
Section 5 (4) (b) an applicant from a member state of the Paris Convention for
the Protection of Industrial Property or the World Trade Organization may
claim priority up to six months from filing the first application. This is effected
by making a declaration to that effect on the application form and attaching a
copy of the earlier application relied on. The priority date counts as the date of
filing for purposes of novelty or originality.

Under Section 6 of Act 660 a substantive examination is conducted in the

register for past designs to ascertain whether it satisfies the required condition
of novelty. In countries where only formal examination is conducted, the burden
of assessing novelty is shifted to those interested persons in the market who
may wish to use or have used the design or substantially a similar design. Once
the application is approved it is published in the Journal, which provides an
opportunity for any interested person to oppose the registration under Section 7
of Act 660.

The rights granted lasts for five years at first but may be extended over two
five-year periods up to a maximum of 15 years. Under Section 3, the right in a
design vest in the designer or successors in title unless the design is developed
by an employee in the execution of his duties or following instructions given by
his employer , in which case the design belongs to the employer subject to
contrary agreement . A design developed jointly by two or more designers vest
in all the designers jointly. Where the design is created by virtue of a
commission for money’s worth, the person commissioning the design is treated
as the original proprietor. However where the design is computer generated in
circumstances such that there is no human creator, the person making the
arrangement necessary for its creation is considered the creator. The owner of a
design has the right to take legal action against anyone using the design without
permission and to claim damages from them.

Under Section 9, the rights conferred by registration is to use the design and
prevent third parties from using it without the right holder’s consent, in

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particular making, selling , putting it in the market, importing , exporting or
using a product in which the design is incorporated. The remedies available in
an action for infringement or threatened infringement are set out in Section 9(4)
and S. 22., which are an order from the court(injunction) ,seizure of infringing
goods and materials and implements used to manufacture infringing goods,
award of damages and other appropriate remedy provided by law .

A single distinguishing feature may produce a unique overall impression and justify
protection. Mega Zipper (registered Community Design no. 000823414-0002. OHIM).

Design protection can only be sought when the intangible creative idea – e.g. a novel pattern -
is embodied in physical form, such as in a specific fabric or item of clothing. (Snowflake-like
pattern: registered Community Design no. 000772058-0003. OHIM)

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(Photo: Hermes sellier

Advantages of Design Protection

1. Industrial designs are what make a product attractive and appealing; hence,
they add to the commercial value of a product and increase its marketability.
2. When an industrial design is protected, this helps to ensure a fair return on
investment. An effective system of protection also benefits consumers and the
public at large, by promoting fair competition and honest trade practices.

3. Protecting industrial designs also helps economic development, by

encouraging creativity in the industrial and manufacturing sectors and
contributes to the expansion of commercial activities and the export of national
products.

4. Finally, the fact that a design is registered may be enough to put anyone off
using the design without permission.

In most countries, an industrial design must be registered in order to be

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

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industrial design and copyright protection can exist concurrently. In other
countries, they are mutually exclusive: meaning that once the owner chooses
one kind of protection, he can no longer invoke the other.

Under certain circumstances an industrial design may also be eligible for

protection under unfair competition law, although the conditions of protection
and the rights and remedies ensured can be significantly different.

International and Regional aspects:

The Hague Agreement Concerning the International Deposit of Industrial

Designs was adopted within the framework of the Paris Convention, which
entered into force in 1928 and has been revised and supplemented several times.
Three Acts of the Hague Agreement are currently in force, which are:-

The Geneva Act of July 2, 1999 (the “1999 Act”);

The Hague Act of November 28, 1960 (the “1960 Act”);
The London Act of June 2, 1934 (the “1934 Act”).

These Acts are independent of each other however; the application of the 1934
Act is frozen since January 1, 2010, so that no new designation under that Act
may be recorded in the International Register. The freeze of the application of
the 1934 Act does not affect the designations under that Act which were made
before January 1, 2010. The 1999 and the 1960 Acts of the Hague Agreement
are autonomous and totally independent of each other. Both Acts consist of a
fully- fledged International treaty, so that a State may decide to become party to
only one or to both Acts.

The main purpose of the international deposit is to enable protection to be

obtained for one or more designs in a number of States through a single deposit
which is filed with the International Bureau(I.B) of the World Intellectual
Property Organization(WIPO). Any person who can use the international
system has the possibility of obtaining by means of a single deposit made with
WIPO, protect his design in Contracting States of the Agreement with a
minimum of formalities and expense. The applicant through the international
system is relieved of the need to make separate national deposit in each of the
states in which he requires protection , thus avoiding the inherent complications
of procedures that vary from one state to the other. Thus, under the Hague
Agreement, a single international application replaces a whole series of
applications which, otherwise, should have been effected with different national
or regional Office.

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Who may use the system.

An international deposit may be made by any natural or legal person who is a

national of one of the Contracting State or has his domicile or a real and
effective commercial establishment. An international deposit does not require
any prior national deposit and can be made directly with the International
Bureau of WIPO on a form or through the national office of a contracting State
if the law so permits.

Effect of an international deposit is the same in each designated State as if the

applicant deposited it directly in that state and all formalities required under
domestic law had been complied with. If no refusal is notified by a given
designated Contracting Party within the prescribed time limit the international
registration has the effect as a grant of protection in that Contracting Party,
under the law of that Contracting Party.

The Hague system of international registration of industrial designs arose from

a need for simplicity and economy. In effect, it enables design owners from a
Contracting Party to obtain protection for their designs with a minimum of
formalities and expense. In particular, they are relieved of the need to make a
separate national application in each of the Contracting Parties in which they
seek protection, thus avoiding the complications arising from procedures and
languages which differ from one State to another. The Hague system also
avoids the need for constant monitoring of the deadline for renewal of a whole
series of national registrations, varying from one State to the other. In addition,
it avoids the need to pay a series of fees in various currencies. By having a
single international registration with effect in several Contracting Parties, the
subsequent management of the international registration is considerably
facilitated. For instance, a change in the name or address of the holder, or a
change in ownership for only some or all of the designated Contracting Parties,
can be recorded in the International Register and have effect by means of one
simple procedural step carried out through the International Bureau of WIPO.

Ghana is a Contracting State of the Geneva Act of 1999 which introduced a

number of new features into the Hague system , such as the possibility of a
state to declare that the standard time limit of six months allowed for refusal
is extended to 12 months, the possibility to defer publication of designs for up
to 30 months or of a lesser duration, to request for specimens for two
dimensional designs instead of reproduction , the possibility to receive
individual fee instead of a standard fee. The Geneva Act can be acceded to by
States as well as intergovernmental organizations. 46 member states have

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acceded to the Geneva Act.The Hague Agreement has been acceded to by 61
states.

In 2011, for the third consecutive year, Procter and Gamble (P&G), the world's largest
consumer products company, topped the list of applicants using the WIPO Hague
System for the International Registration of Industrial Designs with 167 international
design applications.

THE HARARE PROTOCOL.

The Harare Protocol for Patents and Industrial Designs is administered by the
African Regional Intellectual Property Organization. The Protocol entered into
force in 1984 and now has the following member states as contracting parties:
Botswana, The Gambia, Ghana, Kenya, Lesotho, Liberia, Malawi,
Mozambique, Namibia, Rwanda, Sierra Leone, Sudan, Swaziland, Tanzania,
Uganda, Zambia and Zimbabwe (Total: 17 states).
Under the Protocol an applicant for the grant of a patent or the registration of an
industrial design can, by filing only one application, designate any of the
Contracting States in which he wishes his invention or industrial design to be
accorded protection. The Protocol requires the filing of the application to be
made with either one of the Contracting States or directly with the ARIPO
Office.
For industrial design applications, only a formality examination is performed. If
the application fulfils the formal requirements, the ARIPO Office registers the
industrial designs which has effect in the designated states. However, member
states have the right to communicate to the ARIPO Office within 6 months that
the registration may not have effect in the designated states concerned.

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