Intellectual Property Perspectives: Possibility of dual design protection

Richard Pasipanodya

IN this 49th instalment, we explore the possibility of dual protection of industrial designs under different intellectual property rights laws.
Contextual perspectives

The possibility of dual protection of industrial design stem from a combination of their aesthetic qualities and utilitarian functions. In this sense they are possessed of aspects which would qualify for either copyright, patent or trademark protection, but only excluded by somewhat tenuous rationale of one form or another in a bid to thwart the ugly specter of over protection either through cumulation or dualism of protection mechanisms. What can not be sustainably denied, however, is that there is co-existence of possible options for design protection under existing national and international legislative instruments.

Cumulation and co-existence distinguished
By cumulation of protection is meant an intellectual property legislative regime whereby the design would enjoy simultaneous protection under different laws at the proprietor’s choice. That is to say, the proprietor would be availed choice to invoke either or all of the available legislative protection mechanisms. Meanwhile, by coexistence of protection is meant that the proprietor of the design may choose to be protected under only one particular branch of IP laws at the exclusion of all other potential legislative options available.
Co-existences of protection
The origins of co-existence of design protection laws are rooted in their evolution and socio-economic pervasiveness. In the UK for instance, the founding law extending protection to industrial designs was provided for by the Designing and Printing of Linens, Cotton, Calicoes and Muslims Act of 1787, which covered inventing, designing and printing of any new or original pattern or patterns.
This law was crafted in recognition of the immense contribution and growth of the textile industry then. Subsequent legislative innovation expanded design protection to cover articles of manufacture, whether for pattern, ornamentation, shape or configuration applied to an article by whatever means, whether by printing, painting, embroidery, weaving, sewing, modelling, casting, embossing, engraving, staining or any other means whatsoever necessary, be it done manually, mechanically or chemically, whether done separately or in combination thereof. By these legislative innovations, the universal importance of designs as fundamental to all sources of manufacture and production was thus legally acknowledged and recognised.
The same is relatively true with respect to other jurisdictions where the British held influence. Similar legislative innovations occurred in Europe. For instance, in France, the 1793 law on Protection of Literary and Artistic Works constantly evolved over the years that ensued to encompass all conceivable spheres of human endeavour. It is not by mere coincidence that by 1988 the UK had on its statutes a fusion of the Copyright, Designs and Patents Act.
Aspects of possible dual protection
Aspects of possible dual or parallel protection of industrial designs with other intellectual property rights (IPRs) are to be distilled from its definition (subject matter) of protection acquisition and maintenance requirements as hereunder canvassed.
Definitional aspects
Never mind the slight etymological and syntactical variance in global laws, by definition industrial designs are universally protected for their intrinsic aesthetic qualities or features by reason only of their visual appeal, whether for their pattern, ornamentation, shape or configuration or a combination of these, be it owing to their colour, texture, form or packaging. Put differently, industrial designs are protected for only their artistic appeal or attraction to the eye at the exclusion of functionalty.
In copyright context
The implication of the definition of the subject matter of design protection is that it creates the potential for cumulative or co-existent design and copyright protection. This is because copyright law also extends protection to; artistic works, whether in two-dimensional form such as in patterns or ornamentation (drawings, paintings, embroidery, etchings, engravings, emborsements, etc) or in three-dimensional form such as sculpture or architectural works, and in literary works such as books, magazines and graphic works.
Further, where the term of protection of the registered design lapses or expires, the proprietor may have reliance on copyright protection. In both circumstances the design protection would be far long than the 10 to 15 years protection permissible under design laws.
In trademark context
With respect to trademarks, the co-existence straddles almost all conceivable signs which may serve as trademarks to include; fancy devices, drawings and also two-dimensional representations of goods or containers, colour signs (which would obviously include words, devices or any combination thereof),and three-dimensional signs such as goods or their packaging.
However, this apparent overlap is somewhat abated or obviated by reason that whereas the rationale for the protection of trademarks is that their distinctive character must be capable of distinguishing or identifying the goods or services of one proprietor from those of another, as opposed to design protection for aesthetic attraction. Thus, while trademark may be strikingly ornamental, it must further have the distinguishing capacity to be registrable.
Meanwhile, a design need not at all be distinctive though this may be a plus for its protection. Nevertheless, in the event that the design is also possessed of distinctive qualities, then it would also qualify to be registrable and protectable under trademark law. In that event there will certainly be dual or an overlap of design and trademark protection.
In concept of patents
To the extent that the definition of what constitutes registrable design further requires that it be new or original and capable of industrial application, the potential for dual protection also arises under patent law. This is so in most jurisdictions where novelty requirement for designs bears many similarities to that required of patents in nature, scope and the determination thereof.
The requirement that for the design to be registrable it must be applied to an article of manufacture implies that its application must be by manner of industrial process.
This reference further indicates that the application of the design must be done by a process which is capable of being repeated in an identical manner. In this respect the requirement also bears many similarities to the industrial applicability requirement for patents
In the circumstance that non-obviousness is not a requirement for design registration, it does not in itself obviate the potential of dual protection. As propounded by both celebrated commentators and jurists across the globe, there is nothing which precludes an invention from being registered as both patent and also as an industrial design, so long as its functional features qualifies it as patentable invention and its aesthetic features concurrently appeal to the eye within the meaning of the relevant IP laws. In this sense aesthetics and functionalism would be akin to inseparable siamese twins.
From the foregoing, it would mean the conceptual basis that copyright protection is for expression of ideas, patents for functionality, trademarks for distinctiveness and designs for aesthetic qualities is more mythical than real. For, inevitably there is always an inalienable interface and intercourse, hence overlap amongst these branches of IPRs designs. As such, the demarcation requirements to obviate this inevitable interface is more often than not tenuous.
Pasipanodya is an IP consultant who writes in his own capacity. Feedback on: mobile +263 775053007, or