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Published: Fri, 02 Feb 2018
Legal aspects of Product Design
A design that is new and has individual character will be registrable under the Industrial Designs Act 2001. Discuss the registration process established under the 2001 Act and the remedies provided for the infringement of a design right.
The industrial design act was first introduced for the protection of new inventions and also intellectual property right which protects the design of objects. The definition of the words invention and design are as follows:
“The word “invention” means any new and useful art, process, machine, manufacture or composition of matter, or any new and useful improvement in any art, process, machine, manufacture or composition of matter, and includes an alleged invention;
The word “design” means only the features of shape, configuration, pattern, or ornament applied to any article by any industrial process or means, whether manual, mechanical, or chemical, separate or combined, which in the finished article appeal to and are judged solely by the eye, but does not include any mode or principle of construction, or anything which is in substance a mere mechanical device;” 
In order for a design to be registered under the Industrial Designs Act 2001 the design must be a unique new design or has if it has new features in the design such as shape, colour, configuration or pattern which is the product.
“12.—(1) A design shall be considered to be new where no design identical to it has been previously made available to the public before the filing date for registration or, where priority is claimed, the date of priority.” 
In order for a design to be accepted it must not have already been designed and released to the public. As it states under the Industrial Designs Act if:
“(2) A design shall be deemed to be identical to a design which has been previously made available to the public where its features differ only in immaterial details.” 
In the case where two designs of similar features have been released to the public the date of the date when the design was registered becomes important, the design which is registered first shall claim the rights to the design.
For a product to be given protection under the Industrial Designs Act 2001 it must be different from products or designs that already exist under the act, so the features of a new product must give the user a new impression that they don’t have on products that have already been released to the public. In other words the product must have its own individual and unique character that differs it from designs that are already released to the public. For a design to be registered the law states:
“13.—(1) A design shall be deemed to have individual character if the overall impression it produces on the informed user differs from the overall impression produced on such a user by a design which has been made available to the public before the filing date of the application for registration or, where priority is claimed, the date of priority.” 
If the design being registered is a component to a part or is being applied to a more complex design there are guidelines which it must follow in order for to be accepted under the act. The design cannot conflict with any other design or else the design would not be accepted.
“15.—(1) A design which is in conflict with a prior design shall not be registrable under this Act.
(2) In this section “prior design” means a design which has been made available to the public after the filing date of the application for registration of another design, or where priority is claimed, after the date of priority of that other design, and which is protected from a date prior to the said filing date or, as the case may be, the said priority date by a design right under this Act or by an application for such a right.” 
When deciding who the rightful owner of a design there is a number of different situations that will affect the outcome of the ownership. The person who owns the design can also be called the author of the design.
The author of a design is the person who creates the design
In cases where there is joint ownership of the design the two or more people who are responsible for creating the design then become the joint-owners of the design.
There are such times when the author of a design will not own the rights to the design, this occurs when the author creates the design during their regular course of employment.  When registering the design the author has the right to be acknowledged as the author even though they may not have the ownership rights. This case of ownership is very common for people working in big organisations.
When registering a design the proprietor of a registable can go to the Irish patents office to begin to register their design. The design may be refused from the Irish patents Office for a number of reasons which are stated in the Industrial Designs Act 2001, the act states:
“21.—(1) The Controller may refuse an application for the registration of a design—
(a) where the design is contrary to public policy or to accepted principles of morality,
(b) on the application of the copyright owner or on the initiative of the Controller, where the design constitutes an infringement of a copyright work under the Copyright and Related Rights Act, 2000 , or
(c) on the application of the person concerned by the use or on the initiative of the Controller, where the design consists of or includes anything which would not be registered by virtue of section 9, 62 or 63 of the Trade Marks Act, 1996 .” 
Although a design has been refused, the user can make changes to the register application so that it may be registered as long as it doesn’t conflict with subsection (a) and (b).
When an application is first made to the Irish patents office a fee and a representation of the design must be submitted in order for the application to be processed only then is when the filing date will be issued to the proprietor. Any neglect on part of the application on the part of the author may results in the application not being processed.
“23.—An application which, owing to any fault or neglect on the part of the applicant, has not been completed so as to enable registration to be effected within such time as may be prescribed, shall be deemed to be abandoned.” 
The final classification of the application is down to the controller and their decision is final, once the design is registered a certificate of registration is then issued to the proprietor. A notice is then published for up to 30 months in the design journal which must be made available to public for inspection if they so wish. This is stated in the Industrial Designs Act 2001.
“31.—(1) On the registration of a design under this Act, the Controller shall issue to the registered proprietor a certificate of registration in the prescribed form.
(2) The Controller may, where he or she is satisfied that the certificate of registration has been lost or destroyed, or in any other case in which he or she thinks it expedient, furnish one or more copies of the certificate.” 
Once the application process is completed and the certificate is granted there is still procedures which the owner of a design right may have to adhere to such as, people who want to place and injunction on the register of a design may do so by applying for “a rectification of the Register”. The High Court then has the ability to delete a design from the register if they believe that it is in breach of the act by replicating a previous design that has already been registered.
“33.—(1) An aggrieved person may apply to the High Court for an order for the rectification of the Register by the making of an entry in the Register or the variation or deletion of an entry in the Register.” 
The proprietor of a design is the owner of the design right which is the property design once the design has finally become registered. The owner of the design right has complete ownership over the design right and is the only person who is allowed use the design unless they have authorised someone else to use it. When someone has been authorised to use the design right this does not mean that they are owners of the design it only means that they have permission to use the design. The user of the design normally has to pay the owner to use the design right. This includes the importing and exporting of the product or incorporating the design into another product. The design right on a product expires 5 years after the date registration, but once the product has expired it can then be renewed for a maximum of 25 years.
There are certain cases which do not infringe the design right of the owner which can be seen in Chapter 4, Section 48 of the Industrial Designs act 2001;
“48. (1) The design right is not infringed by—
(a) acts done privately and for non-commercial purposes,
(b) acts done for experimental purposes, or
(c) acts of reproduction for the purposes of making citations or of teaching, provided that such acts are compatible with fair trade practice and do not unduly prejudice the normal exploitation of the design, and that mention is made of the source.
(2) The design right is not infringed by—
(a) use of equipment on ships and aircraft registered outside the State where these temporarily enter the State,
(b) the importation into the State of spare parts and accessories for the purpose of repairing such craft, or
(c) the execution of repairs on such craft.” 
A design right is infringed when someone who does not have the exclusive design right and tries to undertake it when they are not the owner of the right. A product can be infringed if the product is tried to be incorporated into another product or products when that person does not have the right to the design or has not been giving permission to use the design.
“51.—(1) The design right is infringed by a person who, without the licence of the registered proprietor of the design and while the design right is in force, undertakes or authorises another to undertake any act which is the exclusive right of the registered proprietor of the design.” 
Other ways in which ways in which infringement can occur is called secondary infringement it is stated in the act as:
“52.—A person infringes the design right where he or she without the licence of the registered proprietor of the design and while the design right is in force—
(a) sells, rents or offers or exposes for sale or rent,
(b) imports into the State, otherwise than for his or her private and domestic use, or
(c) in the course of a business, trade or profession, has in his or her possession, custody or control,
a product which is, and which he or she knows or has reason to believe is, an infringing product.” 
If the proprietor of the design right cannot meet the demands of the people in the state which that design right applies then someone can apply to the controller for a licence to be able to produce the product without infringing on the proprietor of the design right. This can happen in cases where a company who has the design right of a product cannot meet the demands of the market, therefore another company is granted the right to produce that product. The granting of the design right can also happen when a company is not being reasonable about product such as overcharging consumers for the product. This is known as a compulsory licence. Compulsory licences can be changed or even cancelled if the circumstances change, for example the demand for a certain product falls so much that the company with the original design right can meet these demands, this would result in the compulsory licence being cancelled.
If a design right is infringed by someone who has not being given the right to produce a certain product or design then the registered proprietor of the design has to the ability to take action on the infringement, this is action in normally taken in the form of remedies such as seeking damages, filing for an injunction or getting a cut off the profits which has been made without the permission of the registered proprietor.
“57.—(1) An infringement of the design right is actionable by the registered proprietor of the design.
(2) No proceedings shall be taken in respect of an infringement committed before the date on which the certificate of registration of the design under this Act is granted.
(3) In an action for infringement of the design right under this section, all relief by way of damages, injunction, account of profits or otherwise is available to the plaintiff as it is available in respect of the infringement of any other property right.” 
If the defendant can prove that when the infringement occurred that they did not know that the design was already regisitered then the proprietor of the design right would not be intitled to any damages. This is shown in the Industrial designs Act as innocent infringement.
“58.—(1) Where in an action for the infringement of the design right in a registered design, it is shown that at the time of the infringement the defendant did not know and had no reason to believe that the design was registered, the plaintiff shall not be entitled to damages against the defendant and no order shall be made for an account of profits.” 
If a design has been infringed the court may award the plaintiff aggravated damages which can be in addition or as an alternative to compensation. If someone has ion their possession products which are infringing on a proprietors design rights, then the owner of the design can get a court order so that the infringing products are destroyed or delivered to the registered proprietor.
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