How to Enforce Industrial Design Patents in The Face of Infringement

In legal terms, an industrial design refers to the aesthetic aspects of a product. These aspects may be protected when specific conditions are met. Industrial design patents are pertinent to a variety of products: from containers to household goods, from lighting equipment to electronic devices, and from textiles to jewelry. In general, an industrial design may consist of:

  • 3D features like the shape of a product.
  • 2D features like patterns, lines or color of a product.
  • A combination of the above.

Why Protect Industrial Designs?

It is essential to protect industrial designs as part of any designer’s/manufacturer’s business and investment strategy due to the following reasons:

  • A registered industrial design enables the owner to have an exclusive right to prevent imitation by third parties, thereby bolstering the owner’s competitive position.
  • Registered designs are business assets that can enhance the commercial value of a company and its products. A company’s value is directly proportional to the success of its design.
  • It adds substantial marketing value to a product as it makes the product attractive and appealing to consumers.
  • Lastly, the exclusivity offered by a registered design right enables an owner to license the design to others to use for a fee, or to assign or sell the design right to others.

So far, several design infringement cases have been filed around the world. Some of the famous ones are mentioned below.

  • Apple vs. Samsung Design (Lawsuit Closed)

Since 2011, the companies Apple and Samsung have had litigations over the designs and functionality of their tablets and smartphones. Samsung was recently hit with USD399 million penalty for infringing on Apple’s designs. Notably, the design patent at issue are D618677 (a black rectangle with rounded corners), D593087 (bezel on surrounding rim) and D604305 (colorful grid of 16 icons).

  • Nike vs. Walmart

Nike has filed a lawsuit against Walmart for allegedly infringing on their design patents. The infringed patents include the US Design Patent number D498914 and D499248. These design patents share the same title – “Portion of a shoe midsole”.

Enforce Industrial Design Patents Rights

Essentially, the owner of a registered industrial design holds the right to prevent third parties from producing, selling or importing articles displaying a design which is a replica of the protected design. In most countries, under the industrial design law, an industrial design needs to be registered to be protected as a “registered design”. In some countries, industrial designs are protected as “design patents”. However, in few countries, industrial design laws grant protection without registration and are called “unregistered industrial designs”.

What can be Registered as an Industrial Design?

To be eligible for registration, an industrial design must meet one or more of the following requirements:

  • It must fit the definition of a design under the applicable law. For instance, a logo may not be registered as a design in certain jurisdictions since it is not considered a product.
  • The design should be novel. A design is considered novel if no identical design has been made available to the public prior.
  • The design should be original. A design is considered original if it has been created independently by the designer and is not replica of the existing designs.
  • The design should have individual character. This criterion is met when the overall impression produced by a design on an informed user differs from the overall impression produced by any other design publicly available.

Enforce Industrial Design Patents Right in Case of Infringement

The main responsibility for identifying and taking necessary action against design infringements lies with the right owner. This means that the owner is responsible for monitoring the use of his/her design in the physical and online market spaces, recognizing any infringing uses and determining how and when to act against them. Click here to read our article – 3 Steps for Detecting Patent Infringement: An Easy Approach to know about the three-step approach that Sagacious IP follows to detect patent or design infringement.

Industrial Design Patents_Alleged Design Infringement

Figure 1 (above) shows the advised actions in case of an alleged design infringement.

Enforcing an industrial design patent, like any other intellectual property (IP) right, can be a complex matter. In case of suspected infringement, design owners are advised to seek legal advice. Furthermore, the first action should be drafting a “cease and desist letter” to inform the alleged infringing party of a possible conflict between the two designs. Though the right owner should be sure that their design rights are valid, and infringement can be proved as in many jurisdictions the alleged infringing party may bring an action against baseless threats of enforcement proceedings. If the infringement continues after the “cease and desist letter”, a legal action must be taken. Numerous measures are available including “surprise action” by obtaining a search and seize order to conduct a raid, without prior notice to the alleged infringer.

Generally, to protect the value of a registered design, it is crucial to also regularly monitor the registration of designs to make sure that no third party is attempting to register an identical/similar design. Service providers, such as attorneys and other IP professionals, can assist with monitoring, while search tools for design registrations can also be used. The duration of protection of an industrial design varies from country to country, but it lasts for at least 10 years. In several countries, the total duration is divided into successive renewable periods.

Therefore, if the right owner discovers that a third party has registered an identical design or is attempting to do so, they can refer to their earlier right and either oppose the registration of that design or request that the design registration be declared invalid, as the case may be.  At Sagacious IP, we offer the best-in-class Design Patent Filing And Prosecution Service that enables you to not only secure the registration of designs but also keep a record of filed designs in order to keep track of deadlines.

-The Editorial Team

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