This is our design!
By registering an industrial design the owner may prevent others from commercially using the design without his authorization in a country where it is registered.
What is an industrial design?
The Art. 102 of the Act of 30 June 2000 – Industrial Property Law stipulates that:
“1. 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, colours, shape, texture or materials of the product and its ornamentation shall constitute an industrial design.
2. Any industrial or handicraft item, including, in particular, packaging, get-up, graphic symbols and typographic typefaces, but excluding computer programs, shall be considered to be a product.”
To sum up, an industrial design:
• must be new: under the Art. Article 103.1”An industrial design shall be considered new if, before the date according to which priority to obtain a right in registration is determined and subject to paragraph (2), no identical design has been made available to the public, i.e. used, exhibited or otherwise disclosed. Designs shall also be deemed to be identical with those made available to the public if their features differ only in immaterial details.”;
– it must relate to the outer appearance of a product such as: shape or surface, contours, ornaments, texture, drawing, colours etc.
– it must have an individual character: under Article 104.1. “An industrial design shall be considered to have individual character, if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been made available before the date according to which priority is determined.”
What constitutes a product under Polish Industrial Property law?
(i) a product which is composed of multiple components, which can be replaced permitting disassembly and reassembly of the product (complex product),
(ii) a component part, if, once incorporated into the complex product, it remains visible during normal use of the latter, the use being understood as excluding maintenance, servicing or repair work.
(iii) a component part, if it may, by itself, be subject of commercialisation.
- make a product attractive and appealing,
- add to the commercial value of a product,
- increase its marketability,
- increase profits of a company,
- when protected, help to ensure a fair return on investment,
- contributes to the expansion of commercial activities and the export of national products
Industrial design registration:
- benefits consumers and the public at large by promoting fair competition and honest trade practices,
- helps economic development, by encouraging creativity in the industrial and manufacturing sectors
- helps the owner to prevent unauthorized parties from making, selling or importing any product in which the design is incorporated or to which it is applied
- helps to take action against unfair competitors who make, sell, import , advertise product which is confusingly similar or identical to your design
IMPORTANT! The above indicated rights are limited to the territory for which the design is registered.
Can an industrial design be protected by other IP rights?
Depending on the particular national law and the kind of design, an industrial design may also be protected as a work of art under copyright law. In some countries, industrial design and copyright protection can exist concurrently. In other countries, they are mutually exclusive: once the owner chooses one kind of protection, he can no longer invoke the other.
It is also possible to have the design protected as a trade mark, eg. A three-dimensional one, especially if the shape of the product is distinctive enough as is required for registration of a trade mark.
Unfair competition law
Under certain circumstances an industrial design may also be protectable under unfair competition law, although the conditions of protection and the rights and remedies ensured can be significantly different.
Where can I protect my industrial design?
An industrial design should be registered in the country where it is to be used (sold, produced, distributed, imported etc.) If there are more such countries it is possible to use multi-territorial registration routes.
There are three possible routes to choose from to register an industrial design:
National route (one country)
Regional (European) router (27 countries)
Through the Office for Harmonisation in the Internal Market in Alicante to ensure protection in all member states of the European Union. This route ensures in fact two types of protection (both have to meet the same conditions to be registered):
1. A registered Community design (RCD). An RCD initially has a life of five years from the filing date and can be renewed for subsequent five-year periods up to a maximum of 25 years. Applicants may market a design for up to 12 months before filing for an RCD without destroying its novelty. The fact that the right is registered confers on the design great certainty should infringement occur
2. An unregistered Community design (UCD) is defined by the CD Regulation in the same way as the RCD but protects a design for a period of three years from the date on which the design was first made available to the public within the territory of the European Union. An unregistered Community design confers on its holder a right to prevent copying. RCDs and UCDs.
Under the Hague Agreement Concerning the International Registration of Industrial Designs, a procedure for an international registration is offered. An applicant can file a single international application with World Intellectual Property Organisation (WIPO) by designating as many Contracting Parties as he wishes.
Since 1 January 2008, it has been possible to designate the European Community in an international application for an industrial design filed with the International Bureau of the World Intellectual Property Organization (WIPO) in Geneva. WIPO will then register the international application and send it to EUPIO. It will have the same effect as applying directly for a Registered Community Design.
What are the costs of protection?
- Official fees
For the current official fees to ensure protection and then renew industrial design registration in Poland go here.
For the official fees as must be borne to ensure protection of the industrial design in the European Union through the European Union Intellectual Property Office (EUPIO) go here.
For the official fees to be paid for registration of an industrial design under Hague Agreement in the World Intellectual Property Organization (WIPO) go here:
- Industrial design creator’s remuneration (creation, assignment of the copyright)
- Patent and trade mark attorney’s fees
As registered and experienced patent attorneys, we can help our clients to:
- evaluate and provide advice on the kind of protection should be sought: trade mark or industrial design or both
- provide advice which route should the applicant choose (national, international, regional)
- prepare and file an industrial design application to the Patent Office of the Republic of Poland, EUPIO and WIPO,
- perform industrial design database search to evaluate protection availability
- exchange correspondence with a patent office: reply to communications, notifications, rectify deficiencies or any irregularities concerning the application as communicated by the office etc.
- introduce allowable amendments to the application
- record changes in the industrial design register as kept by the patent office (new owner, licensee etc)
- monitor timely payment of renewal fees
- represent applicants in opposition/ cancellation/ revocation proceedings
- negotiate agreements with third parties concerning license or assignments
- enforce rights of applicants/owners to their industrial design against infringers
- support clients in filing industrial design applications in other than Polish patent offices: contact local patent attorneys worldwide, monitor application procedure and timely payments of renewal renewal fees; negotiate amounts of attorneys’ fees, prepare necessary translations
IMPORTANT: Any persons not having their domicile or seat in Poland, in proceedings before the Patent Office of the Republic of Poland in matters relating to the filing and processing of applications and maintenance of the protection (including fee payments) of inventions, utility models, industrial designs, trademarks, geographical indications and topographies of integrated circuits may only act when represented by a patent attorney entered in the Patent Attorneys’ Register kept by the Patent Office of the Republic of Poland whose address for services is in Poland (Article: 236 of the Industrial Property Law).
A comprehensive list of registered attorneys is available on the website of Polish Chamber of Patent Attorneys.