PROTECTION OF THE PRODUCT’S APPEARANCE So What is Design?
The products offered on the market are often similar in terms of the technology used. It is the distinctive appearance of a product that usually determines its success on the market. Potential buyers interested in a given product are guided by its looks – whether it has an original design. Industrial design is a concept that every entrepreneur who produces some products as part of their business should familiarize themselves with.
When looking for information on what industrial design is, one can find the term “a skin covering the technology”. However, this is not the most precise term. In the case of an industrial design, a more appropriate term would be to say “the external appearance of a product”. The protection resulting from the industrial design does not concern the technical features of the products, but the features that determine its characteristic external looks. Industrial design rights may not be used to protect solutions for which other intellectual property rights are intended (e.g. patent, utility design). Examples of industrial designs include packaging or furniture.
Industrial design in industrial property law
As defined in the Industrial Property Law Act, an industrial design shall constitute any new and having individual character appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, shapes, colours, texture or material of the product and its ornamentation. In the provisions of the Industrial Property Law Act, the legislator explained also the concept of a product. A product shall mean any item manufactured industrially or handcrafted, including, in particular, packaging, graphic symbols and typographic typefaces, excluding computer programs. A product shall also mean an item consisting of many replaceable components enabling its disassembly and reassembly (a complex product); a replaceable component part of a complex product if, after its incorporation into a complex product, it remains visible in the course of its normal use, which shall be understood as any use, excluding maintenance, servicing or repair.
Novelty and individuality
Not every product’s appearance will be subject to registration. However, this does not result from matters related to aesthetics. Therefore, whether the product looks good or bad does not matter. Designs do not have to feature aesthetic values.
In order to be able to successfully register an industrial design in Poland, other conditions must be met. According to the above definition as part of the Industrial Property Law, an industrial design is any new and individual appearance of a product. The conjunction “and” indicates that in the event of failure to meet any of the conditions, i.e. being new or having individual character, protection cannot be obtained.
Novelty means that the design has not been disclosed previously and does not have an identical predecessor. Individual character, in turn, refers to the effect that the design, and not its individual elements, exerts on the informed user.
Registration of industrial designs
An industrial design may be registered in national offices: in Poland – in the Patent Office of the Republic of Poland, as well as at the EU level, in the European Union Intellectual Property Office, as well as at the international level – in the World Intellectual Property Organization. The protection of an industrial design always applies to a specific territory.
The consequence of registering an industrial design is the granting of a number of rights to the applicant. Upon registration, the applicant is granted e.g., the right to the exclusive use of an industrial design for commercial or professional purposes within a specific territory, as well as the right to require third parties to refrain from using the design. Moreover, thanks to the registration of an industrial design, the value of the product increases – it becomes an element of personal or business property.
Registration of an industrial design in Poland
The registration of an industrial design is completely voluntary. In Poland, the right to register an industrial design is granted by the Patent Office of the Republic of Poland.
Registration is chargeable and is made upon an application. The role of the Office is limited to checking that the form has been completed correctly and not examining whether a given design meets the premises for granting protection. The entire procedure before the Polish Office takes from 2 to 6 months. On the other hand, the right arising from the registration may last up to 25 years.
What happens if the entrepreneur fails to complete such registration? Protection may also be provided by the provisions of, for example, the Act on copyright. The problem, however, is that not every industrial design will constitute a “work” within the meaning of the Copyright and Related Rights Act. Another argument in favor of registering the industrial design is that the enforcement of rights under the Copyright and Related Rights Act is much more complicated due to the need to present details of evidence and circumstances.
Protection against copying the appearance of the product can also be obtained under the Act on combating unfair competition. Pursuant to Art. 13: “Unfair competition shall be imitating the finished product, whereby the external form of the product is copied by technical means of reproduction if it is likely to mislead customers as to the identity of the producer or the product.”. Protection under the above Article, likewise protection under the Copyright and Related Rights Act, is independent of any registration, but the process of claiming rights may turn out to be cumbersome due to more complicated evidentiary proceedings.
Entrepreneurs increasingly see the benefits of registering industrial designs. Consequently, the number of registered designs is growing year by year. Before taking any steps related to the registration of a given product, the entrepreneur should consider what he actually wants to protect. Protection of industrial designs applies to the visible elements in the course of the normal use of a given product. Components that are hidden inside a given product will not be subject to such protection. Therefore, if one would like to protect a specific technical solution, then registration of a patent for an invention or a utility design should be considered. The success of a given product may be determined by not only the technology used but also its aesthetic features. Hereby, registration of an industrial design may secure an entrepreneur against the copying or counterfeiting of their design by competitors, as well as contributing to the increase in financial profits. Registering an industrial design secures against counterfeiting. Failure to do so may lead to a situation when pursuing claims will turn out to be more difficult and costly.
Monika Gaczkowska, associate, WOLF THEISS
Last Updated on March 30, 2021 by Karolina Ampulska