Are Design Rights at Risk?!

30 Mar 2019

By: Amro Hattab
Executive Director/ Abu-Ghazaleh Intellectual Property (AGIP)

A reminder of Design definition:
Design right is a form of intellectual property rights, which aims to protect the shape of products (for 3D goods), and could be used as well for protecting images in a form of (2D products). Designs can be consisting of the creation of shapes, patters, and/or a combination of different visual elements, including colors; to produce a certain product or commodity.  

Designs and Models can be presented in different forms, such as a glassware, vehicle, furniture, software and application icons, toys and packaging. The main goal of filing a design right is to protect the outer-shape of a product, the ornament side, but never the functionality of that design. 

Within IP rights, design could be the most variable one between countries and regions, as the validity of design varies between 10 to 25 years, some of them are subject to renewals or annuities, while in some other countries, no renewal is needed to maintain the validity of the subject design.

Another variable is related to novelty condition, where design application has to be new in order to be granted in most countries; while in other countries, no such condition is required, however, novelty is rarely examined for design applications. Yet, it is of real essential to file the design before any public disclosure (despite of the availability of grace period in some countries), to maintain the originality of the subject design.

Similar to Madrid system for TMs; it is possible to file one application of multiple designs (up to 100 designs) in several countries/regions (69 territories) through Hague system. All of which are in one application, one language and one set of fees.

Design Application in the Middle East & North Africa:

Despite of the fact that most countries within the region share same language, culture and maybe history as well, yet when it comes to IP, major differences will be sought, and Design law is very much the same.
For example, the option of having a design registration in Qatar is not available, while in other countries design law is available for prosecution; but enforcement wise there are some challenges. Below is a summary of major differences:


Country Design Term (Validity) Novelty Requirements (Absolute) 
Mandatory (Yes)/Not Mandatory (No)
Algeria
10 years -  Renewable for 10 years
Yes
Bahrain
10 years – Renewable for 5 years
Yes
Egypt
15 years – Renewable for 5 years
Yes
Gaza
15 years – Renewable for 5 years Yes
Iraq 10 years – Annuity per year Yes
Jordan 15 yeas – Not Renewable Yes
Kuwait 15 years – Not Renewable No
Lebanon 25 years -Renewable once for 25 years Yes
Morocco 25 years – Renewable for 5 years No
Oman 15 years – Renewable for 5 years Yes
Pakistan 10 years – Renewable for 10 years Yes
KSA 10 years – Annuity per year Yes
Sudan 15 Years – Renewable for 5 years Yes
Syria 5 years – Renewable twice for 5 yeas Yes
Tunisia 15 years – Not Renewable No
Turkey 25 years – Renewable for 5 years Yes
UAE 10 years – Annuity per year Yes
West Bank 15 years – Renewable every 5 years Yes
Yemen 10 years – Not Renewable Yes

Design Intersection with other IP Rights:

As explained above, design rights’ main or sole purpose is to protect the visual design of a tangible object, whether in 3D or 2D format, but cannot we rely on Copyright law to protect such designs, or even consider the Trademark law for other objects?! Or maybe unfair completion law!

Design as a Trademark:
So, for example would you rather protect your client’s bottle design as a 3D trademark or as an industrial design? Let us try and discuss the advantages of each alternative:


Under Trademark law:
Longer life, as the design will be renewed indefinitely.
No novelty requirements.
Easier enforcement, especially at Borders and Customs.

Under Design Law:
Shorter processing time for the registration.
Usually less costly.
Can include multiple designs within one application.
Whenever I am approached by a client seeking for a guidance on what to consider out of the two options, my answer will always remain as “it depends”. The answer to the following questions will help the client in choosing the most convenient option:

- Will this design be used for a long period over 15 years?
- Does this design present a product design out of many other products line?
- How many designs are we talking about?
- Do you consider this design a representation to your identity?
- Is this design sufficiently distinguished without any wording or logos?

If the design is to be used for a short term, and involves several versions, and still novel, then filing the same as an industrial design will be the wise option.
Otherwise, if the design is planned to represent a corporate identity, and sufficiently distinguished, and will remain in use for years to come, then trademark would be the option.

Design as a Copyright:
Some patterns can be filed as copyright applications, especially the 2D ornamental designs. In such cases, would you rather file them as Design applications or as  copyright? Similar to the case of the trademark, the answer depends on several variables, such as; the importance of the design, the territories where the design is to be used, the novelty, budget and number of designs. The advantages of each approach are summarized below:

Under Copyright law:
Longer life.
No novelty requirements.
Official filing is not a necessity.
Much less costly.

Under Design Law:
Better enforcement in some circumstances (for similarities).
Focus on commercial side of the design rather than the art side.
Licensing opportunities. 

Based on the above, if the design is unique, new, original, commercially important to the owner, and very much distinctive, then consider filing the same as an industrial design makes a lot of sense. Otherwise, and if the pattern is not of high importance (part of a design), or subject change, and the budget is limited, then copyright might be the option for such uses.  

The Hybrid Era:

Why cannot we have both rights for the same design? Why cannot we start with one IP right and then move to the other available option before the expiry of the first one? 

This is becoming very common now, especially when filing a design as a 3D TM, where such application is usually rejected, unless proved to be distinctive over time, and using the design for a considerable period will definitely support such entitlement. So, the reasonable approach is to start with the design application as Industrial design and then (just before the expiration of the design) to convert the same into a 3D TM.

Same scenario can be also considered for filing 2D design, where we can apply it as an Industrial Design as well as a CR. In fact, we applied for Industrial designs in the countries where the product is commercially used, while in other countries, where product is scheduled to be shipped in few years’ time, it was filed as a CR.

This explain the fact that despite of the intersection between ID and other IP rights, the numbers for new filings are steadily increasing (almost %5 a year) in major regions, namely US & EU, as many owners are in fact considering the hybrid option for their products.

Finally, I would like to emphasize that there are no set or static best practice for such cases, as there are too many variables that are needed to be examined and considered when choosing the suitable IP right to protect your design. 


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