Will Design Applicant’s wishes materialize at WIPO?

Published February 6th, 2017

Design rights are intended to pertain to visual features of shape, configuration, pattern or ornament, or a combination of such features applied to a finished article. This is different from patents which cover new and useful inventions or improvements to an existing invention.

Designs have become more complicated given the advent of graphical user interface (GUI), icon and typeface/typefont designs.

One issue that plagues practitioners is the challenge to draft applications for registering designs that are suitable in more than one country.

For example, the Canadian Intellectual Property Office (CIPO) merely requires that a sufficient number of views be provided to clearly and accurately show the design. Two-dimensional views (such as plan and elevation views) are acceptable, and one or more perspective views are recommended, but not required. Structure that is not part of the claimed design, but which is considered helpful to show the environment in which the design is used must be represented using broken lines. However, CIPO allows no more than one (1) view showing the environment per design. CIPO allows fragmentary views to be shown on either the same sheet as the parent view, or on a different sheet.

By contrast, for example:

The Korean Intellectual Property Office (KIPO) requires that the design be shown in no fewer than seven (7) views (i.e. top, bottom, front, rear, left and right), including one (1) mandatory perspective view.

The Japanese Patent Office (JPO) requires that the design be shown in no fewer than six (6) views (i.e. top, bottom, front, rear, left and right), with certain exceptions. In cases where opposing sides are either identical or symmetric, the view of one of the opposing sides can be omitted, provided that a minimum of three (3) views are supplied. Additionally, for designs of heavy equipment (e.g. a bulldozer), the bottom view may be omitted. The JPO also requires that partial designs be shown as a part of the article to which they are applied, which requires the disclaimed portion of the article to be expressly shown. Any views of the article not showing the partial design may be omitted, provided that a minimum of three (3) views are supplied.

The European Union Intellectual Property Office (EUIPO) allows a maximum of seven (7) views per design. Detailed view portions must not be included in the same view, and must be presented as a separate view. The EUIPO requires that disclaimed portions of the design be shown on views.

Happily, the World Intellectual Property Office’s (WIPO) Standing Committee on the Law of Trademarks, Industrial Design and Geographical Indications is trying to resolve this. It is hoped that ultimately the various Member States will harmonize the practice on a best practices basis which likely would encourage more applications for design registrations.