Industrial design in its simple definition is fundamentally an expression of style or form that is unique, distinct from a known or already existing work of art. Therefore, for the purpose of the flourishing and increase in the innovations and new creations of designs and ideas, there is a need to protect the innovations, new creations of designs and ideas, even though not in its entirety but a quantum of it. Industrial Design is not about the external appearance of an article, design or material but in its peculiarities, distinctiveness, and significance or striking appearance and how it is appealing to the eye.
In this paper, the search light is beamed on the beauty of industrial designs in Nigeria, its registration process and how long it takes for a creator of an industrial design to enjoy some exclusiveness, that is, its duration.
Industrial Designs may be described as any combination of lines or colours or both, and any three dimensional form whether or not associated with colours, provided it is intended by the creator to be used as a model or pattern to be multiplied by industrial process and not intended solely to obtain a technical result.1 NOTE that an industrial design is not just the combination of lines or colours but must also include compulsorily, any three dimensional form which may or may not be associated with colours.
Briefly, let us examine the history of Industrial Designs in Nigeria and how it was received in Nigeria which has now become recognized in the country. It is pertinent to state that like Copyright law, Trademark and Patents law, the roots of industrial designs law in Nigeria was from the received English law. The United Kingdom Designs (Protection) Act was the law regulating industrial design in Nigeria; however, the existence of the 1970 Act repealed the United Kingdom Designs (Protection) Act and provided for the original registration of industrial designs in Nigeria. The major aim of the law is to protect a design that is new or essentially new inventions, so, when many consumer products are technically very similar, designs becomes so important and a distinguishing factor.2As the law developed, the right of owner of the registered designs was treated as good against the entire world. Therefore, the design had to be shown to be novel at the priority date of the application and the application was subject to an examination before registration. Therefore, a proprietor of an industrial design who was desirous of registering the industrial design had to apply to do so in the United Kingdom under the Registered Designs Act of 1949, this is before the promulgation of the Patents and Designs Act of 1970.
The law of industrial designs protects the outward or aesthetic appearance of products. The protection of industrial designs is afforded by law in its recognition of the importance of visual appeal to customers/ consumers in the choice of products.3 This aids consumers/ customers in knowing which product is which and not going for an entirely different product as a result of a striking similarity between the product selected/bought and the product the consumer/ customer thought / thinks he bought/ buys.
REGISTRATION OF INDUSTRIAL DESIGNS
First, not all industrial design is registrable. However, for an industrial design to be registrable in Nigeria under the Nigerian law, some conditions must be fulfilled which are;
- The Industrial Design must be new; and
- The Industrial Design must not be contrary to public order or morality.4
Upon application for the registration of an industrial design, the industrial design would be presumed to be new except provided or shown otherwise. One of the ways in which an industrial design sought to be registered would not be presumed to be new is when it appears to the Registrar that the industrial design sought to be registered has been made available to the public anywhere and at any time by means of description or use or even in any way made available to the public.5
Exceptions to the general rule of newness and not been made available to the public includes;
- If within the period of six months immediately preceding the application for registration of the industrial design, the creator had exhibited it in an official or officially recognized exhibition, such exhibition shall not be presumed to have been made available to the public. 6 Such exhibitions may be Government organized or approved trade fairs. In this instance, the industrial design still satisfies the condition of newness. If the creator of the industrial design shown to the satisfaction of the Registrar that he is not aware neither could he have known that the industrial design was already made available to the public.7
The newness of an industrial design goes to the extent of its distinctiveness, not merely in its minor or inessential distinctiveness or difference with an already existing and registered industrial design. This means that if a creator applies for the registration of his industrial design, the Registrar would examine the industrial design if it is similar in its uniqueness, distinctiveness or its essential features with an already existing and registered industrial design. If this is the case, the Registrar may not register the subsequent industrial design.
As it was stated earlier, not all industrial designs are registrable. According to Babafemi, the following designs are not registrable.
- Works of Sculpture other than casts or models used or intended to be used as models or patterns to be multiplied by an industrial process.
- Printed matter of a literary or artistic character, including calendars, book jackets, certificates, coupons, greeting cards, leaflets, maps, plans, dress making patterns, stamps and the likes…8
However, in my opinion some of the items stated above may be registered as industrial design, for example dress making patterns may be registered as industrial design, as there are some patterns that are unique to a maker or creator of his or her work of art.
DURATION OF INDUSTRIAL DESIGNS
In 1787, The Designing and Printing of Linens, Cottons, Calicoes and Muslins Act, 1787, gave the printers, designers, inventor of any new and original pattern exclusive rights of exploitation for two months only. In 1794, the duration of protection was extended to three months of exclusive exploitation by the printers, designers, inventor of any new and original pattern. This era, the protection was given in response to the needs of textile industry.
The registration of an industrial design shall be effective in the first instance for five years from the date of application for registration and upon the payment of the prescribed fees, it may be renewed for two further consecutive periods of 5 years. What this means is that initially, upon the application for registration and its registration, the duration of exclusiveness and exploitation to its creator is 5 years while subsequently upon the payment of the prescribed fee, the exclusiveness and exploitation of the industrial design may be renewed for 10 years, making a total of 15 years.
However, the prescribed fee should be paid within 12 months immediately preceding the renewal period/ the date of expiration of the initial 5 years. Although, a period of 6 months is usually given as a grace, after the beginning of the renewal period, that is, after the expiration of the 12 months immediately preceding the renewal period, for the payment of the prescribed fee for the renewal of the duration of the industrial design. Thereupon, it shall be deemed upon the payment of the prescribed fee within the 6 months grace that the creator has complied with the provisions of the law on renewal. The registration, expiration and renewal of an industrial design shall be registered and notified.9
- Section 12 Patents and Designs Act CAP P2, LFN, 2004
- Babafemi F.O. Intellectual Property; The Law and practice of Copyrights, Trademarks, Patents and Industrial Designs in Nigeria (listed, Ibadan, Justician Books Limited, 2007) P. 412
- Akanki E. O. Commercial Law in Nigeria (Revised Edition 2007) P. 485
- Section 13 (1) (a) & (b) Patents and Designs Act, CAP P2 LFN, 2004, Sunday Uzokwe Vs. Densy Industries (Nig) Ltd & Anor (2002) M.J.S.C 37
- Chukwumereije and Sons (W/A) Ltd v. Patkun Industries Ltd and Sons (1989) FHCLR 423, in this case, the court held that the design in dispute which is shoe soles, was not new as it had already been sold to customers prior to the application for registration. Similar is the case of Iyeru Okin Plastic Industries Ltd v. Metropolitan Industries (Nig) Ltd. (1986) FHCLR 336
- Section 13 (4) Patents and Designs Act, CAP P2 LFN, 2004
- Section 13 (3) Patents and Designs Act, CAP P2 LFN, 2004
- Babafemi F.O. Intellectual Property; The Law and practice of Copyrights, Trademarks, Patents and Industrial Designs in Nigeria (listed, Ibadan, Justician Books Limited, 2007) P. 428
- Section 20 Patents and Designs Act, CAP P2 LFN, 2004
Ifeoluwa Badejo is an Associate Partner;
Sun Natha-Alade & Partners (SNATHAP)