Registering a Design
The more successful your design, the more important it is that you register your design and the stronger your legal barrier. This can become your most valuable business asset and like any other property, this can be bought, sold, transferred or licenced.
What is a Design?
In many new products, the novelty lies not in a new idea or principle but in their appearance. A registered design gives the proprietor a monopoly in the appearance of his design as applied to a particular article. It should also be noted that an unregistered design may also be eligible for copyright protection.
Benefits of Registering a Design
A design can be protected by a design right to the extent that it is new and has individual character. A design will be considered new if no identical design has been made available to the public before the date of filing of the application for registration or, if priority is claimed, the date of priority. However, designs whose features differ only in immaterial details are also deemed to be identical. A design is considered 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 any other design.
In practice, registration will generally only be refused if:
- an almost identical design is found to be registered on a prior date;
- the design is purely functional; or
- the design is found to be contrary to public policy or to accepted principles of morality.
The specific criteria upon which a registration may be refused are laid down by law. Upon registration, a design is protected by what is known as a “design right” for a period of five years from the date of filing of the application and confers on its holder the exclusive right to use that design and to prevent any third party from using it without the necessary consent, this is usually granted in the form of a commercial licence. Such use includes the making, offering, putting on the market, importation, export or use of a product in which the design is incorporated or to which it is applied, or stocking such a product for such purposes.
An application for registration of a design must be filed with the Comptroller in the Maltese or English language and must contain the following:
- a request for registration of a design;
- the name and address of the applicant;
- the design which is the subject of the application;
- the name and address of the agent or representative, in cases where one has been appointed; and
- a declaration claiming priority in cases where the applicant wishes to take advantage of an earlier application.
The Comptroller will examine whether an application for registration of a design satisfies the requirements of the law, and if it appears to the Comptroller that the requirements for registration are not met, he will inform the applicant and give him an opportunity to make representations or to amend the application within such period as the Comptroller may specify. If the applicant fails to satisfy the Comptroller that those requirements are met, or to amend the application so as to meet them, or fails to respond before the end of the specified period, the Comptroller will refuse the application. If it appears to the Comptroller that the requirements for registration are met, he will accept the application as eligible for registration.
Registered Community Design
It is also possible to for design owners to apply for a Registered Community Design which covers all the countries European member states, and consequently affords the following benefits:
- a single application;
- a single language of procedure;
- a single administrative centre;
- a single file to be managed.
It is also possible to designate the European Community in an international application for an industrial design filed with the International Bureau of the World Intellectual Property Organization (WIPO) office in Geneva. Once WIPO registers the international application, this is sent to the Office for Harmonisation in the Internal Market (OHIM).