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Industrial design protection requirements

Richard Pasipanodya

IN this 47th instalment, we canvass the essential requirements for industrial design protection.Legislative context
Because industrial designs are by nature  an intimate blend of aesthetics and functionality, their innovativeness encompasses virtually all fields of human endeavour. They are therefore covered by more than one international instrument. Prominent among these are; the Paris Convention for the protection of Industrial Property (1883); Berne Convention for the protection of Literary and Artistic Works (1886); Hague Agreement for the International Deposits of Industrial Designs, and the Harmonising TRIPS Agreement (1995).
Further, given that national legislative  development shows that the emergence and expansion of Industrial Design protection was in direct response to the expansion and growth of industrialisation, we  find that the TRIPS Agreement extends industrial designs protection upon somewhat different variant minimum standards across different jurisdictions.

The result was  that not only did international initiatives and attempts at global harmonisation essentially achieve partial success, but faced the possibility of dual protection under different international property laws  — mainly copyright laws. Further, in most jurisdictions, the subject matter of industrial protection is not queried upon registration due to lack of capacity to conduct substantive examination of the application  i.e. whether the application as lodged contains all the required documentation.

Substantive requirements
The fundamental requirement for the registration of industrial designs is novelty as measured against existing prior art as at the time of application and per publication of the design to be registered. Depending on the laws of each country, the novelty or originality required may be universal or absolute, meaning that the state of prior art would encompass existing similar designs at any time, anywhere in the world, whether disclosed by  oral or tangible means as is the case with patents, or qualified.

In the case of qualified novelty requirement, this may be qualified or limited as to; time preceding the publication, territorial jurisdiction as opposed to anywhere in the world, or with reference to mode of  disclosure, be it written or oral anywhere in the world, or with regards to the relevant jurisdiction. Never mind the jurisdictional discrepancies, fundamental to the requirement of the novelty criteria is the appeal to the eye of the industrial design in question.

In passing though, it is instructive to state that proponents for the absolute standard of novelty argue that the grant of exclusive rights to creators of industrial designs should only be justifiable as a reward for demonstrable ingenuity for creating something new. Meanwhile, those in favour of qualified novelty hold the view that since one of the central objectives underlying industrial design protection is to promote increased and qualitative local design processes, it is justifiable in the spirit of progress not to deprive local creators protection for designs disclosed elsewhere to which they are not privy.

Visual appeal criterion explored
From the onset, noteworthy is that, naturally most designs incorporate both aesthetic (registerable) and functional aspects (unregisterable), in which event these will be registerable with respect to the aesthetic aspects only at the exclusion of protecting the functional aspects or features. Visual appeal being the cornerstone criterion for adjudging novelty or originality of designs, we thus hereunder explore its connotations as distilled from various jurisdictional dicta (court reasoning).


  • The aesthetic appeal of design features to be judged solely by the eye;


  • Despite lack of explicit statutory reference, in all cases the eye is considered to be that of the court;
  • The court must view design features from the spectacles of the nominal consumer of the articles to which the design in question is targetted;
  • In this determination, it is quite permissible and justifiable for the court’s eye to be tutored by expert witnesses who, either because of their engagement in the relevant trade or are possessed of specific knowledge thereto, are in a position to assist the court in arriving at proper determination;
  • The court must undertake a proper comparison of the design that needs to be registered, and prior designs are ascribed to the doctrine of imperfect recollection ie. that the nominal consumer may not be in a position to see the articles to which the design is applied at the same time or place as the court has;
  • In comparing the designs, it is imperative that the drawings deploring the design under probe as well as that of the manufactured article must be looked at, not only juxtaposed side by side, but placed at a little distance apart and at different times.


In a nutshell, the equity of the registrability of the designs entails considering how the design in question would appeal to and be judged by the likely consumer of the class of the articles to which the design is targetted. In this endeavour and pursuit account must also be taken that the appeal or attraction may find favour with some of the likely customers while equally finding disfavour with others.

Exclusive rights conferred
The exclusive rights conferred upon the proprietor by design registration is negatively couched insofar as it prevents third parties from the unauthorised commercial exploitation of the design of the articles of a similar class with respect to making, using, disposing or importation, by virtue whereof he/she shall enjoy the whole profit and advantage therefrom. The scope of such protection is circumscribed by the definitive statement accompanying the application for registration and lasts for a maximum of 15 years subject to five-year renewal intervals.

Exclusions and limitations
As with other intellectual property rights (IPRs), exclusions and limitations to design protection are intended to strike an equitable balance between the conflicting interests of the proprietor, consumer and third parties, including the state. Among the most common of these are:


  • Methods or principles of construction, whose impact would be to preventing others from using the same to arrive at similar but new designs, hence stifle scientific progress and creativity. From another dimension, registration of these would be tantamount to patent grant.
  • Features of shape or configuration which are solely dictated or necessitated by the function to which the design is intended to perform as their registration would have the effect of pre-empting similar endeavours. However, this exception applies only in those cases where only one option is available and not in cases where different shapes and configurations are conceivably possible.
  • “Must fit” criteria are excluded as these are dependent upon the appearance of the article to which it is applied. This exception applies mostly to spare parts for motor vehicles, machinery and equipment, the underlying objective being promotion of industry and commerce by allowing other independent manufacturers to produce more spare parts.
  • Designs which are contra bonos moros (contrary to public morality). However, by virtue of jurisdictional variance and fluidity  as to what  constitutes acceptable moral norms and values, the determination thereof is thus normally left to the discretional prerogative of the registrar.
  • Pasipanodya is an IP consultant who writes in his own capacity. Feedback on: mobile +263 775053007, or e-mail:henripasi@gmail.com.


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