WHAT IS A REGISTERED DESIGN/INDUSTRIAL DESIGN?

This article discusses how to register a design in Nigeria. A registered design also known as ‘industrial design’ is an intellectual property right governed by the Nigerian Patents and Designs Act. It is defined as any combination of lines or colours or both, and any three-dimensional form, whether or not associated with colours, if it is intended by the creator to be used as a model or pattern to be multiplied by industrial process and is not intended solely to obtain a technical result.

Essentially when you register a design, what you are doing is you are protecting the external shape of a product. It protects the overall visual appearance of a product, or part of a product, for example, the lines, contours, shape, texture and/or surface decoration. A registered design/industrial design however does not protect the technical or functional features of the product, it only applies to the aesthetic nature of a finished product, and is distinct from any technical or functional aspects. This type of intellectual property protection is relevant for things like fashion and handicrafts, watches, jewellery, household products, toys, furniture, textile designs etc.

Once validly registered, a registered design/industrial design gives the owner the right to stop anyone copying the external design of their product, within their geographical jurisdiction, in this case, within Nigeria. The industrial design/registered design is referred to as a ‘design patent’ in the United States of America. A design registration can be used to stop other individuals in Nigeria from using a visual design which is identical or similar to the registered design/industrial design, regardless of the product it is applied to.

WHY YOU SHOULD REGISTER A DESIGN/INDUSTRIAL DESIGN IN NIGERIA

• Registration gives the user the monopoly over the use of the registered design/industrial design.
• Industrial designs are assets that can increase the commercial value of a company and its products. The more successful a design, the higher is its value to the company.
• A protected design can be used as a revenue generation tool for an individual or a company, as it may be licensed or sold to 3^rd parties for a fee.
• Registration encourages competition and innovation, in that people are more incentivised to create their own unique and new designs rather than copying from others.

CRITERIA TO REGISTER A DESIGN/INDUSTRIAL DESIGN

• The design must be “new” – a design meets the newness criteria if no identical design has been made available to the public before the date of filing, or the application for registration.
• The design must be “original” – designs are considered as ‘original’, if they have been independently created by the designer and is not a copy or an imitation of existing designs.
• The design must have “individual character” – here what is required, is that the overall impression produced by a design on an informed user differs from the overall impression produced on such a user by any earlier design which has been made available to the public.
• The design must not be dictated exclusively by the technical function of the product. If this is the case, the design registration is not the appropriate form of intellectual property. A more relevant application would be a patent application.
• The design must not include protected official symbols or emblems such as the national flag, the coat of arms etc.
• The design must not be one which is considered to be contrary to public order or morality.

PROCESS TO REGISTER A DESIGN/INDUSTRIAL DESIGN

In a lot of countries in the world, when applying for a registered design/industrial design, the individual will need to specify what ‘class’ he/she is registering for protection under. These countries use the classification of the Locarno Agreement Establishing an International Classification for Industrial Designs. The Locarno Classification is the international classification system for industrial designs that is administered by the World Intellectual Property Organization. However, Nigeria is not a signatory to the above Agreement and has no classes of registration for designs. Therefore, all registrations are applied to all products, so if you register a unique design of a mobile phone, that design would be protected against an individual who sought to register the same unique design, but for a pen. The initial registered design would prevent the second individual from registering the design.

To register an industrial design, an application must be filed at the Registry of Trademarks, Patents and Designs in Nigeria. A design that has already been disclosed to the public by, for example, advertising it in  your company’s catalogue, a brochure, or on social media may no longer be considered “new”. It becomes part of the public domain and cannot be protected after six months of such exhibition, or unless the priority of an earlier application can be claimed.

In Nigeria, the right to a registered design lasts for 5 years but may be extended for two further periods each of five years. Therefore, the total period any product can be registered for protection is 15 years.