Industrial design

Nullity. Industrial designs are null and void in the following cases:

• Lack of novelty or unique character.
• The applicant is not entitled to be the owner.
• The design applied for is incompatible with a design already registered in that country.
• It uses emblems, insignia, etc. from another country.
• It incorporates a trademark or other distinctive sign.
• Unauthorized use of a work protected by intellectual property rights.

Expiration. The expiration of designs causes them to enter the public domain, and the reasons for this are:

• Failure to renew at the end of a five-year period.
• Due to resignation of the holder.
• Because the holder no longer meets the conditions of legitimacy for the holder.

The application for international design registration must contain a duly completed application form, together with a reproducible representation of the design or model, and the designation of the countries where protection is sought.

The application, which must be submitted in English or French, can be filed:

• At the Spanish Patent and Trademark Office (OEPM).
• At the WIPO International Bureau in Geneva, Switzerland.
• At the Mexican Institute of Intellectual Property (IMPI).

The validity of the international design registration is five years from the date of registration. It may be renewed for additional periods of five years until the maximum period established by the legislation of each designated contracting party is reached.

This system has the advantage of simplifying and unifying certain procedures within the application when seeking protection in a large number of countries, facilitating the management of various national designs after they have been protected.

The company files a single application, in a single language, and pays a single set of fees. The design will be protected in as many States party to the Hague Agreement as the applicant wishes, i.e., the effects of this application are the same as if it were an application made in each of the countries designated by the applicant.

The application for a registered design must contain an application for registration, together with a representation of the design that is capable of being reproduced.

The main difference is that the Community design grants a right for the territory of the European Union, while the Hague Agreement allows, by filing a single application with the World Intellectual Property Organization, the processing of several national applications for industrial designs.

The application can be submitted in any of the official languages of the EUIPO (including Spanish):

• To the European Union Intellectual Property Office (EUIPO).
• To the Spanish Patent and Trademark Office (OEPM).

• Uniform and robust protection throughout the European Union due to a single set of rules for all Community designs.
• Ease of processing as it involves a single application.
• A single language of submission.
• A single administrative center.
• A single file to manage.
• A single payment.
• Granting the owner the exclusive right to use it and to prohibit its use by third parties without their consent.
• Possibility of filing multiple applications (i.e., including several drawings and designs in a single application, for example, a complete series of similar products).
• Possibility of deferring publication of the drawing or design for up to 30 months to prevent competitors from gaining knowledge of it.

The Community Regulation grants protection to both registered and unregistered designs:

Registered Community Design: confers an exclusive right to the external appearance of a product, if an application is filed, with a single fee, with protection in the 27 countries of the European Union.

• The owner obtains the exclusive right to use and to prohibit the manufacture, offering, placing on the market, import, export, use, or storage for such purposes of products incorporating the design and not producing a different overall impression, without their consent.
• * During the examination process, the EUIPO does not check whether an application for a registered Community design infringes any intellectual property rights of a third party. However, once the design has been registered, any interested third party may request a declaration of invalidity.

Unregistered Community Design: confers the right to prohibit the commercial use of the design only if such use results from copying. Failure to protect the design by means of registration may make it difficult for the owner to prove the date of disclosure, from which protection begins. Notwithstanding the above, there is a grace period whereby the owner of an unregistered design has 12 months (from the date of disclosure) to apply for registration of the design without losing its novelty.

To obtain a design, it is necessary to submit a duly completed application form, together with a graphic representation of the design.

In the case of Spain, the application can be submitted:

• At the Spanish Patent and Trademark Office (OEPM).
• At any post office.
• Through the Intellectual Property Registry: in the case of creations intended for the decoration or aesthetic configuration of a product, provided that they have artistic merit.

In the case of Argentina, at the National Institute of Intellectual Property (INPI).

The company may file applications for protection in each and every country where it wishes to protect the design.

In general, the protection of industrial designs is limited to the country that grants the protection. There are three scopes of protection:

• National design.
• Community design.
• International design.

The scope will be determined by the territorial scope covered by the type of design we have applied for.

• Thus, if we have applied for registration of a design nationally, we will only have protection in that country.
• If we have sought protection under EU law, our design will be protected throughout the European Union.
• If we have applied for an International Design, under the Hague Agreement concerning the international deposit of industrial designs, there is a procedure consisting of the filing of a single application with WIPO (World Intellectual Property Organization), with the design being protected in as many States party to the treaty as the applicant wishes.

Designs protect the appearance of products. They cannot protect their functionality. Remember that patents protect inventions relating to machines, apparatus, devices, processes, and products; they must have an industrial application and be described in such a way that an expert in the field can reproduce the process.

• Drawings and models protect the novelty and uniqueness of products, while the registration of a three-dimensional trademark protects the distinctive character of the sign from other existing signs that are being used for the same products or services.
• An original shape cannot be registered as a trademark if it does not meet the condition of being distinctive in relation to the products or services for which it has been applied. A product to which a design is applied or incorporated that has been marketed for years prior to the filing of the application for registration will be registered, but any interested third party could have the registration declared invalid on the grounds of lack of novelty.
• Trademarks can be renewed indefinitely for periods of ten years, while registered Community designs have a maximum duration of 25 years from the date of application for registration.

• Utility model: the shape of an object that results in a technical advantage is protected.
• Industrial design: the shape of an object is protected for its originality and aesthetic effect. It is intended exclusively for the ornamentation and presentation of products.

When an industrial design is protected by registration, the owner is granted the exclusive right to use it and prevent its use by third parties without their consent. This includes the right to exclude another party from manufacturing, offering, importing, exporting, or marketing any product in which the registered design is incorporated.

The first thing to do before applying for design protection is to check that your industrial design has not been previously registered. To do this, you can consult the following databases:

• INVENES database on the OEPM website (www.oepm.es).
• SIGA database on the IMPI website (www.siga.impi.gob.mx).
• INPI database on the INPI website (www.inpi.gov.ar).

In Spain, the following cannot be protected as industrial designs:

• Designs that do not meet the requirements of novelty, visibility, and uniqueness.
• Designs that respond exclusively to the technical function of a product.

*The technical or functional characteristics of such designs may be protected, depending on each case, by other intellectual property rights.

• Designs bearing official symbols or emblems.
• Designs that are considered contrary to public order and morality.

In Argentina, the following cannot be protected as industrial models or designs:

• Models or designs that do not meet the requirements of novelty, visibility, and uniqueness.
• Models or designs that respond exclusively to the technical function of a product.

*The technical or functional characteristics of such designs may be protected, on a case-by-case basis, by other intellectual property rights.

• Models or designs bearing official symbols or emblems.
• Models or designs that are considered contrary to public order and morality.

In Mexico, the following cannot be protected as industrial designs:

• Designs that do not meet the requirements of novelty, visibility, and industrial application.
• Designs that respond exclusively to the technical function of a product.
• Designs bearing official symbols or emblems.
• Designs that are considered contrary to public order and morality.

In order for an industrial design to be granted, it must meet a series of requirements:

• Global novelty: novelty is understood to exist when no other identical design has been made available to the public previously.
• Visibility: it shall be visible when it is visually perceptible when incorporated into the product for which it is intended.
• Uniqueness: it is unique when the overall impression on an informed user differs from the overall impression produced on that user by any other design that has been made available to the public previously.

The following, for example, can be protected as industrial designs: vehicles, furniture, packaging, device casings, lines of objects, new features introduced in fabric and paper designs, etc.

• Industrial design protects the innovative external form of products, encompassing both two-dimensional forms (drawings) and three-dimensional forms (models) or a combination of both.
• Thus, formal innovation relating to the appearance characteristics of the product itself or its ornamentation is protected. Technical aspects are not relevant for registration purposes and, where applicable, the means of protection is the patent.
• In industrial design, only the external form is relevant. Furthermore, there is no opposition phase prior to the granting of a design; it is always granted and, once granted, it is up to third parties to invoke a better right.

Industrial design refers to the appearance or ornamentation of all or part of a product that derives from the characteristics of the lines, contours, colors, shapes, texture, or materials of the product itself or its ornamentation and that makes it visually different from another, without taking into account its technical or functional characteristics.