No worries, Lisa. I will help you to draw up a protection strategy for your industrial designs!
Above are two popular examples of registered industrial designs. The success of a product is usually influenced by its visual appearance, where aesthetic appeal is one of the critical factors influencing consumer decisions.
It is important for owners of industrial designs to draw up a protection strategy which coheres with the business strategy for the product in question.
The procedure and process for an industrial design application differs between the 10 SEA countries.
Each country may require a slightly different list of documents upon their discretion, therefore you shall check with your entrusted agent or lawyer when preparing for filing.
Cost-savings on filing only one application, and paying one set of fees to one office, and in one language.
Changes to the application, such as address and renewal of the term, can be made via one application to the International Bureau of the World Intellectual Property Organisation (WIPO).
Administrative convenience in not needing to monitor the progress of individual applications proceeding throughout the countries of interest.
The local rules and legal formalities requirements in the designated countries still apply. Potential for increased preparation costs as you might have to submit an application that adapt to the formalities of each country.
There are relatively few participating SEA countries.
It is important to conduct searches for existing industrial designs to ensure the novelty of a proposed design to be registered or to avoid any potential infringement.
|Items/documents required for registration||Checklist|
|Power of Attorney/Form to appoint a local agent (if not domicile or real business operations in the country)|
|Priority right claim (if any)|
|Statement of novelty/Description of design|
|Representations of design|
|Representations applied to each article in a set (if any)|
An applicant has filed an earlier corresponding design application in a Paris Convention country or a WTO member country can claim priority from the first-filed provided that the subsequent application is made within six (6) months of the date of the first filing.
It is recommended to consult with local lawyers or agents who can help you to understand if your design meets the requirements for registration or if you could protect the goods with some other form of IP in that country.
|SEA Country||Period of Protection|
|Brunei||Initial period of 5 years, and extendable for 2 periods of 15 years from the filling date.|
|Cambodia||Initial period of 5 years, and extendable for 2 periods of 15 years from the filling date.|
|Indonesia||10 years from filing date.|
|Laos||Initial period of 5 years, and extendable for 2 periods of 5 years each, up to a maximum of 15 years from the filing date.|
|Malaysia||Initial period of 5 years, and extendable for 4 periods of 5 years each, up to a maximum of 25 years from the filing date.|
|Myanmar||As of November 2017, there is presently no functioning system of protection for industrial designs. However, the draft legislation for industrial designs was published in 2015 and is awaiting deliberation in Parliament.|
|The Philippines||Initial period of 5 years, and extendable for 2 periods of 5 years each, up to a maximum of 15 years from the filing date.|
|Singapore||Initial period of 5 years, and extendable for 2 periods of 5 years each, up to a maximum of 15 years from the filing date.|
|Thailand||10 years from filing date.|
As IP Offices in most SEA countries generally only conduct a formal examination of the industrial design application, which pertains to whether the necessary documentation and details are provided, a substantive examination of the registrability requirements, such as novelty and industrial application, is not undertaken. Consequently, it is often faster for industrial designs to be registered when compared to other IP applications such as patents or trade marks, barring any deficiencies in the required documents.
A cease and desist letter (C&D) can be issued as a show of force to the infringer to demand a halt to the infringing activity.
In certain countries like Vietnam and Thailand, administrative actions are also possible cost-effective and time-efficient options although they tend to be limited in effectiveness due to the relative inexperience of administrative bodies in dealing with more specialised areas such as industrial designs.
In some countries like Singapore, Malaysia and Vietnam, an infringer who has no knowledge or had no reasonable ground for believing that the design was registered, will not be liable for damages.
IP rights are territorial and industrial designs must be registered in each country where you have a business interest in.
IP audit should be performed on a regular basis. As with other aspects of a business strategy, your IP can evolve over time.
A registered design may be obtained to protect the features of shape, configuration, pattern or ornament applied to an article by an industrial process.
Once a design is created, it must not be disclosed in order to preserve the novelty, since failing to do so, would expose you to the risk that their design may then be considered as non-novel and incapable of registration.
The procedure and process for an industrial design application differs between the ten SEA countries.
Consider the best way to make use of your IP. If you are unable to fully commercialise it through your own efforts, licensing of industrial design rights could be a viable option.