Industrial Designs: Articles 25 and 26

In one line

A design that is new or original must be protectable for at least ten years, and the owner must be able to stop others making, selling or importing articles bearing a substantially copied design for commercial purposes.

In exam wording: Section 4 of Part II of TRIPS, Articles 25 and 26, requires the protection of independently created industrial designs that are new or original, permits exceptions for functional and textile designs, and confers rights of a duration of at least ten years.

What is protected, Article 25

Article 25.1: members shall provide for the protection of independently created industrial designs that are new or original.

The word or matters. A member may require novelty, or originality, and need not require both, which accommodates the difference between registration systems that examine for novelty and copyright style systems that ask only whether the design was independently created.

Members may provide that designs are not new or original if they do not significantly differ from known designs or combinations of known design features.

And members may provide that protection shall not extend to designs dictated essentially by technical or functional considerations. That is the functionality exclusion, and it is the boundary between design law and patent law: a shape that must be that shape to work is not protected as a design.

Article 25.2 is a textile specific provision and it addresses a real commercial problem. Each member shall ensure that requirements for securing protection for textile designs, in particular in regard to any cost, examination or publication, do not unreasonably impair the opportunity to seek and obtain such protection, and members are free to meet this obligation through industrial design law or through copyright law.

The reason is that textile designs are numerous, short lived and cheap to copy. A registration system requiring examination and fees for each of hundreds of seasonal patterns is a practical denial of protection, which is why the article permits copyright as the route.

The rights conferred, Article 26

Article 26.1: the owner of a protected industrial design shall have the right to prevent third parties not having the owner's consent from making, selling or importing articles bearing or embodying a design which is a copy, or substantially a copy, of the protected design, when such acts are undertaken for commercial purposes.

Two limits are built into the right. It reaches a copy or substantial copy, so an independently created similar design is not caught; and it reaches acts for commercial purposes, so private and non-commercial making is outside it.

Article 26.2, exceptions: members may provide limited exceptions to the protection, provided that they do not unreasonably conflict with the normal exploitation of protected designs and do not unreasonably prejudice the legitimate interests of the owner, taking account of the legitimate interests of third parties.