That’s right, what I am referring to industrial design protection as another branch in IP protection regime. It offers exclusive right for owner of a registered industrial design to prevent any third party from making, selling, or importing an article or a product embodying a registered design which is a copy of the protected design, particularly when copied for commercial purpose.
The keywords are aesthetic and a new design. Industrial design is legally defined as a creation of shape, configuration, or composition of line or color, or lines in combination with color, or any combination thereof, formed in three or two dimension depicting aesthetic impression when is applied over a product, an article, an industrial commodity, or a handicraft.
Basically, four objects of protection in industrial designs consist of a shape, a configuration, a line composition, or a color composition.
A configuration, for example, includes a chair ornament, an embroidery thread on a bottle or a tire, a bottle design, a bottle cap design, footwear design, furniture design, or package design. Such thread or ornament is what industrial design protection applies, not that tire or bottle.
Another obvious example are also GUI (graphical user interface) of an app in a smartphone screen and a diamond engraving.
If you just draw a design without being applied to trade-intended goods, then it solely falls under the copyright regime. It means that industrial designs protection will benefits when you apply it on a commercial product. The different with copyright is then newness or original as this is a prerequisite requirement in industrial designs registration in the DGIP (IP office).
Indonesia IP legal regimes likely place industrial design in close with a copyright regime, than patent, which may not the case in foreign IP laws. Notwithstanding, such design cannot be a technical consequent design or design dictated essentially by technical or functional consideration, like a gear, machine block, saw blade, or any engineering design. Those are not a aesthetic creation.
A design is not new or original on condition that the same does not significantly differ from known designs or combination of known design features. If you have a design of a bottle, then the same can be protected, and no protection over your bottle composition, like plastics or glass.
To be validly registered to DGIP, a design must be new or original. The examiners can reject your application even on the basis of your owned published design on online marketplaces, for example. So if you has promoted a product on whatever searchable media before the day for a design is official registered to DGIP, your application is going to be rejected by the design examiners (if they found already known similar design).
They may tolerate an already promoted design to be applied for registration to DGIP on condition that within six months from the filling date of design registration. Alternatively, one year can be tolerated by examiners only for a design applicant from a legal entity because (i) it has made actual investment to its subsidiary or partners; (ii) employing employees; and (iii) already undertaking commercial presence.
Why such one-year toleration is not applicable for individual applicants? Examiners experienced that many of them are likely fraudulent importers who only pools registered designs for filing lawsuit with no intention to use in commercial undertaking.
In 2004, there was a motorcycle design is registered to DGIP, but it then rejected as depicting similar impression of a registered motorcycle design made by Tossa Group, an Indonesian motorcycle company. A design must be rejected when in conflicting with prevailing legislations. For instance, a design depicts a national emblem of Indonesia, blasphemy, pornographic impression, traditional expressions of tribes.
A shoes design NIKE was firstly registered to the industrial design protection, then following the expired protection period (10 years), it was registered to the trademark regime. This strategy was arguably also used by Polaroid Corporation.
An example, a partial part of a shoe design was sought for protections. This was a partial design application request before the DGIP
If you design a certain part on a cycle, you can still give title of your application as ‘cycle’, even though, you apply for part of cycle. Examiners are okay with that as long as you provide a clear picture of what part is sought for the protection.
In case you apply a set of product (e.g. set design, set of cups), then may seek for individual protection of each set of that product in one application submission (e.g. three requests in one application). You also can have a initial proof of a copyrighted symbol/icon, then you apply for the industrial design as a set of an article with those attached symbols/icons.
For GUI, any change of registered GUI design is also necessitated to be registered again. Such change occurs in a whole impression of GUI, if you just adjusted a icon or a small symbol, you do not need to apply again for purpose of protection.
In submitting your a (or set of) industrial design application, you must provide a clear picture of your design. If you have a chair, you can put all sides of that chair showing its indentation, instead of a b/w picture.
The trivial different with patent is that a patent application is solely required you to draft a good and clear claim of invention, so a text description and claim supersedes any patent figure or products. In industrial design protection, however, that is not the case as the 2D or 3D picture is paramount ones, and any text-picture description (caption) is just for supporting function.
Apart from the design picture, an industrial design application shall elaborate (i) title of a industrial design; (ii) captions of design (e.g. front-rear look, side-look, perspective look, reference look) and ; (iii) its intended usage; and (iv) claim being sought for (e.g. a shape, configuration, line composition, and/or color composition).