4. Recent Developments Outside Europe

Patents / US and Foreign Patent Practice / EU Design Regulation / Recent Developments Outside Europe

In addition to these developments in Commonwealth countries, many developing countries have, with the assistance of WIPO, been active during this period in introducing or modernizing their own design laws. In many countries, a distinction was initially drawn between two dimensional designs, commonly referred to as “designs” and three dimensional designs, commonly referred to as “models”. [19] These distinctions have tended to disappear as laws are revised. In this context, it is interesting to note the description of what constitutes an industrial design given by WIPO on its web site. This is as follows:

An industrial design is the ornamental or aesthetic aspect of an article. The 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.

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; from textile designs to leisure goods.

To be protected under most national laws, an industrial design must appeal to the eye. This means that an industrial design is primarily of an aesthetic nature, and does not protect any technical features of the article to which it is applied .

Recent thinking outside Europe, which has to a greater or lesser extent been influenced by WIPO’s advice, can be seen by the new design laws adopted over the last five years in the Philippines, the Andean Community, Malaysia and India.

For example, the recent Intellectual Code of the Philippines[20] defines a design as:

any composition of lines or colors or any three dimensional form, whether or not associated with lines or colors; provided that such composition or form gives a special appearance to and can serve as pattern for an industrial product or handicraft as long as the design is not dictated essentially by technical or functional considerations or those that are contrary to public order, health or morals. [21]

The terms “industrial product” and “handicraft” are not defined so that it is not yet clear what the position will be on parts of articles.

No additional requirement of creativity or inventive step is required beyond the need for the design to be novel.

The new common code for the Andean Community defines that which is protectible as:

the particular appearance of a product resulting from any arrangement of lines or combination of colors or any two-dimensional or three-dimensional outward shape, line, outline, configuration, texture or material that does not alter the intended purpose or use of said product. [22]

The term “product’ is not defined.

However, the code then denies protection to designs whose commercial exploitation “has to be prevented to protect morality or public policy”, designs “whose appearance is entirely dictated by considerations of a technical character or by performance of a technical function without entailing any arbitrary involvement of the designer” and except for designs of articles forming part of a modular system, designs that are required to enable an article to fit with another element to form an article incorporating the article embodying the design in question. [23]

There is no requirement for any additional degree of creativity beyond the novelty of the design but “the mere fact that (the design) embodies secondary differences in relation to earlier creations or refers to a category of goods different from” earlier creations will not suffice to impart novelty to the design.

Other recent design laws coming out of a different tradition are those of India and Malaysia where the Commonwealth influence might be expected to have some effect. In Malaysia, this is seen to be the case with the definition of a protectible design being

features of shape, configuration, pattern, or ornament applied to an article by an industrial process or means, being features which in the finished article appeal to and are judged by the eye, but does not include:

(a) a method or principle of construction; or
(b) features of shape or configuration of an article which:

(i) are dictated solely by the function which the article has to perform; or
(ii) are dependent on the appearance of another article of which the article is intended by the author of the design to form an integral part. [24]

Designs which are contrary to public order or morality are not capable of protection. However, there is no requirement for any degree of creativity or originality beyond the design being new.

In India designs are now defined as:

features of shape, configuration, pattern, ornament or composition of lines or colors applied to any article whether two dimensional or three dimensional or in both forms by an industrial process or means, whether manual, mechanical or chemical, separate or combined, which in the finished article appeal to and are judged solely by the eye; but does not include any mode or principle of construction or anything which is in substance a mere mechanical device and does not include any trade mark ... or property mark.... [25]

The term “article” is defined as including “partly natural” substances and parts of articles if “capable of being made and sold separately”.

To be protected, the design must be new and original and furthermore must be “significantly distinguishable from known designs and combinations of known designs”. [26]

Thus it can be seen that these countries have answered the questions noted above by: agreeing that a patent type form of protection was appropriate and that there should not be any distinctions drawn between designs for two and three dimensional articles, but not coming to any clear agreement on the question of how much creativity was required for protection, how functional an article or feature could be and still obtain protection, and what to do about spare parts.

On the question of what novelty requirements should apply, in the Philippines, the test is the same as that for patents namely:

Everything which has been made available to the public anywhere in the world before the filing or the priority date of the application...

Additionally unpublished prior copending applications of others are also to be considered as prior art.

In the Andean Community , novelty for the purposes of design protection is defined as being lost if before its filing date or validly claimed priority date the design “has been made available to the public in any place or at any time by description, use, marketing or any other means.”

The Malaysian definition of novelty requires that the design has not been disclosed to the public in Malaysia before the filing or priority date or been the subject of an earlier filed Malaysian design application. [27]

In India the statute does not define what is meant by the requirement that the design is “new” but does provide that certain acts are a bar in addition to the requirement of newness. These are disclosure to the public in India or in any other country by publication in tangible form prior to the application or where relevant the priority date. [28] Additionally the Act provides that certain acts do not destroy novelty. These include disclosure by the proprietor of the design to another in circumstances such that it would be contrary to good faith for the recipient to publish the design, the taking of a first and confidential order for articles bearing a new textile design [29] and, as long as an application is filed within six months, disclosures at approved exhibitions. [30]

The majority of the countries considered therefore have, more or less adopted the proposed novelty requirement of the BIRPI Model Law.

[19] See, for example, the Spanish Industrial Property Code of 1929 which provided protection for three dimensional models that were “differentiated by means of structure, configuration or ornamentation” from what had been done before, whereas designs were defined as “arrangements or combinations of lines or color capable of being applied for commercial purposes in the ornamentation of products”.

[20] Republic Act No. 8293, effective on January 1, 1998.

[21] Republic Act 8293, Sections 112 and 113.2.

[22] Andean Community Decision 486, Article 113.

[23] Andean Community Decision 486, Article 116.

[24] Malaysian Industrial Designs Act 1996 Section 3. The term “article” includes parts of articles but only if that part “is” made and sold separately.

[25] Indian Designs Act 2000, Section 2.

[26] Indian Designs Act 2000, Section 4. The term “original” in this section means little more that the author of the design devised it him or herself and that it was not derived from another. See Section 2(g) of the Act.

[27] Malaysian Design Law 1996 Section 12. This also provides a limited grace period for disclosures at officially recognized exhibitions and for unauthorized disclosures deriving from the true designer.

[28] Indian Designs Act 2000, Section 4(b).

[29] Indian Designs Act 2000, Section 16.

[30] Indian Designs Act 2000, Section 21.

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