Protecting an industrial design is not only a necessary legal step, but also a smart strategy to safeguard the investment, strengthen the trademark, generate revenue and convey a positive image. Industrial designs, also known as industrial models or industrial drawings, are crucial elements in the differentiation and success of a product in the market. For this reason, the protection of these designs is a powerful tool that can make a difference in a competitive market.
What is an industrial design?
An industrial design is the aesthetic or ornamental representation of an article. It can encompass features in three dimensions, such as the shape or texture of an object, or in two dimensions, including designs, patterns, lines and colours. In other words, it is the visual appearance of a product, an element that makes it attractive to the consumer.
Industrial designs are versatile and apply to a wide range of products ranging from technical instruments, medical devices and watches to jewellery, household appliances, vehicles and even architectural structures. They also include more everyday items such as textile prints and recreational items. The key for an industrial design to be protected is that it must be essentially aesthetic in character. This means that it must not relate to functional aspects of the product.
How is an industrial design protected?
The protection of an industrial design is essential to safeguard the design investment and to maintain exclusivity in the market. In most countries, protection is obtained by registering the design under specific industrial design laws. In some places, such as Spain, there is the figure of the ‘unregistered design’ which grants a more limited protection in time and scope, but can be useful in certain situations.
The registration of an industrial design gives the holder exclusive rights over his model for a certain period of time, which varies according to local legislation. During this time, the owner has the right to prevent third parties from using, manufacturing or selling products that include a design identical or similar to the registered design.
In some cases – and under certain legislations – industrial designs may also be protected as works of art under copyright law. This duality in protection gives creators additional options to safeguard their work.
What conditions must be satisfied in order to protect an industrial design?
Obtaining protection for an industrial design entails the fulfilment of certain conditions. Primarily, the design is required to be new and original, although the specific criteria may vary from country to country.
Generally speaking, a design is considered new if it has not been previously disclosed to the public. On the other hand, it is considered original if it differs significantly from previously known designs or combinations of features of previously existing designs. These conditions are intended to encourage innovation and creativity in industrial design.
What kind of products can benefit from industrial design protection?
Industrial design protection is not limited to a specific type of product; rather, it extends to a wide variety of articles. This includes packaging and containers, furniture, household goods, lighting equipment, jewellery, electronics, textiles and more. Industrial designs can also encompass graphic symbols, graphical user interfaces and logos.
In this context, it is important to note that an application for registration of an industrial design in Spain can include up to 50 different designs of the same product (with the exception of two-dimensional ornamentations). Each design can include up to seven different views, providing a complete description of the aesthetic appearance of the product. For products to be protected, they must conform to the typologies considered in the Locarno Classification, which defines 32 different classes of products. This condition allows designs to be protected in a single class corresponding to the product developed.
What is the scope of protection of an industrial design?
Design protection is a critical aspect of ensuring the exclusivity of a design. However, this protection is often limited in geographic scope. Generally, it applies only in the country granting protection. However, there is an exception to this rule thanks to the Hague Agreement Concerning the International Deposit of Industrial Designs, a treaty administered by WIPO (World Intellectual Property Organisation).
Specifically, under the Hague Agreement, an applicant can file a single international application with WIPO or the national Office of a country that is party to the treaty. This means that the industrial design will be protected in as many States party to the treaty as the applicant wishes, which significantly extends its scope.
In principle, the holder of a registered industrial design or design patent has the power to prevent third parties from making, selling or importing articles which file or include a design which is a copy of the protected design, provided that these acts are done for commercial purposes.
It is relevant to recall that industrial design rights are granted for a limited period, the duration of which varies from country to country. In many places, protection is divided into successive renewable periods. For example, in Spain, the duration of protection conferred by industrial designs is five years from the date of filing the application for registration. This protection may be renewed for one or more successive five-year periods, up to a maximum of 25 years from the filing date. An industrial design is renewed on payment of the corresponding fee every five years.
How to extend protection internationally?
As mentioned above, the validity of the registered design is usually limited to the national territory of the granting country. However, during the six months following the filing date of the application, it is possible to extend protection internationally in two ways:
- Community design. This makes it possible to obtain protection in the 27 states of the European Union, simplifying the management of protection in a large market.
- International design. Through this mechanism, it is possible to obtain protection in all 79 member states of the Hague Agreement. This provides broader global coverage
How much does it cost, how and where can you register your industrial design?
The cost of registering an industrial design depends on the number of designs included in the application. The more designs you want to register, the higher the associated fee. In Spain, for example, for the year 2023, the official fee for an application including 1 to 10 designs is approximately €78.
The registration process requires the file of at least one image of the design that allows its clear visualisation. This step is essential for the competent authority to assess and grant protection.
There are two ways to register an industrial design:
- In person. At the Spanish Patent and Trademark Office, at the regional industrial property information centres or at post offices.
- By Electronic Office. This option offers a 15% discount compared to in-person registration.
Before filing an application for registration of an industrial design, it is advisable to search free databases to identify possible similar previously registered designs. This can help to avoid conflict problems and improve the chances of registration.
Importance and benefits of protecting an industrial design
More than a formality, industrial design protection should be an essential part of any business strategy. The reasons for protecting these assets are varied and substantial:
- Return on investment. Protection contributes to a return on investments made in the creation and marketing of attractive and innovative products. By protecting design, it ensures that investments are translated into a sustainable competitive advantage.
- Exclusive rights. In effect, protection grants exclusive rights for at least 5 years (or the specific protection period). This allows the holder to prevent or stop commercial exploitation or copying of the industrial design by third parties. This prevents unfair competition and protects investment in product development.
- Strengthening of trademarks. Indeed, industrial designs can become a distinctive element of a company’s trademark. Protecting them contributes to the preservation and enhancement of the trademark, which can have a positive impact on public perception and the organisation’s image.
- Opportunity for licensing or sale. Design protection grants rights that can be sold or licensed to other companies. This represents an additional source of revenue for the rights holder and can be an effective business strategy.
- Positive image and increased market value. Industrial designs are business assets that can increase the market value of a company and its products. Protection helps to convey a positive image, highlighting a commitment to innovation and quality.
- Encouraging and rewarding creativity. Of course, industrial design protection encourages creativity and innovation, also rewarding designers and creators for their search for aesthetic and functional solutions.
At ISERN Patentes y Marcas we take care of registering your industrial designs.
Almost 100 years of experience in the registration and protection of patents and trademarks, allow us to offer you the right legal advice and support to register your industrial design. At ISERN Patents and Trademarks we also help you to license or assign the industrial property rights to your designs under the best conditions. Contact us and visit us at any of our offices in the 12 most important cities in Spain!