Registration of an industrial design in Kenya

An industrial design right is an intellectual property right that protects the visual design of objects that are not purely utilitarian. An industrial design consists of the creation of a shape, configuration or composition of pattern or colour, or combination of pattern and colour in three-dimensional form containing aesthetic value.

Under the Hague Agreement Concerning the International Deposit of Industrial Designs, a WIPO-administered treaty, a procedure for an international registration exists. To qualify for registration, the national laws of most member states of WIPO require the design to be novel. An applicant can file for a single international deposit with WIPO or with the national office in a country party to the treaty. The design will then be protected in as many member countries of the treaty as desired..

In Kenya, according to the Industrial property Act 2001, an industrial design is defined as “any composition of lines or colours or any three-dimensional form whether or not associated with lines or colours, provided that such composition or form gives a special appearance to a product of industry or handicraft and can serve as pattern for a product of industry or handicraft” .

In other words an industrial design is concerned only with the outward appearance (eye appeal) of articles as defined by their shape, configuration, pattern or ornament. It must be understood that an industrial design DOES NOT protect the method of construction or the function of the article.

Visual appeal is one of the considerations that influence the decision of consumers to prefer one product over another, particularly in areas where a range of products performing the same function is available in the market. If the technical performance of the various products offered by different manufacturers is relatively equal, aesthetic appeal, along with cost, will determine the consumer’s choice.

The legal protection of industrial designs, thus, serves the important function of protecting one of the distinctive elements by which manufacturers achieve market success. By rewarding the creator for the effort, which has produced the industrial design, the legal protection accorded thus serves as an incentive to the investment of resources in fostering the design element of production.

An industrial design is registrable if it is new. An industrial design is deemed to be new if it has not been disclosed to the public, anywhere in the world, by publication in tangible form or, in Kenya by use or in any other way, before the filing date or, where applicable, the priority date of the application for registration.

However, disclosure of the industrial design is not taken into consideration if it occurred not earlier than twelve months before the filing date or, where applicable, the priority date of the application and if it was by reason or in consequence of acts committed by the applicant or his predecessor in title; or an evident abuse committed by a third party concerning the applicant or his predecessor in title.

An example of industrial design is perfume bottles. If you pay attention to higher-end perfumes, different brands have differently shaped bottles, which is a signature IP for their unique brand. This also applies to shoe designs, hair clip designs, hats, and even unique prints of a fabric, for instance, the unique checkered Burberry Fabric. That is an industrial design IP.

Registering for an industrial design right is related to granting a patent

REGISTRATION OF INDUSTRIAL DESIGNS

The Industrial Property Act requires the creation and maintenance of a Register of designs in which the particulars of the registrations will be entered (Sec 45, Reg. 45). The registration procedure involves an examination of compliance with the requirements of the Act and the Regulations

To allocate a filing date to an application for a registered design the examiner checks whether the application contains at least:-

a) a request for registration of a design (IP. Form 27), and information identifying the applicant,

b) a graphic representation of the article embodying the industrial design or a specimen. (sec 87(2) –specific on specimen requirement)

c) Application fees

d) Identification of the Applicant (Sec. 87(7))

Receipt date

The application shall be presented by the applicant or agent to the Institute. The application will then be assigned a file number and receiving date then captured in IPAS upon payment of the filing fees; after which the application will be transmitted to the patent registry for further processing.

Representation of the Design

To allocate a filing date, a representation is considered suitable for reproduction when it meets the requirement that the design must be reproduced on a neutral background and must not be retouched with ink or correcting fluid. It must be of a quality permitting all the details of the matter for which protection is sought to be clearly distinguished and permitting it to be reduced or enlarged to a size not more than 8 cm by 16 cm per view for entry in the Register and direct publishing in the Industrial Property Journal referred to in Sec. 91. Since the representation is the means to specify the features of the design for which protection is sought, it is of utmost importance that it is clear and complete and that nothing regarding the design is left to conjecture. Drawings, photographs (except slides), computer-made representations, or any other graphical representation are accepted provided they are suitable for reproduction.

Formal requirements for registration

1. Details of the applicant- name, address, nationality, the seat of establishment, etc
2. Citation of Creator(s) or waiver
3. Format of the Representation of the Design
4. The graphic representation of the design must consist of a graphic or photographic reproduction of a single design in black and white or in color.
5. the representation must be filed on separate sheets of paper or reproduced on the page provided in the form made available by the Institute;
6. the design must be reproduced on white and opaque paper either pasted or printed directly on it. Only one copy must be filed and the sheets of paper must not be folded or stapled
7. the size of the separate sheet must be A4 size (29.7 cm high, 21 cm wide) and the space used for the reproduction must not be larger than 26.2 cm x 17 cm. A margin of at least 2.5 cm must be left on the left-hand side; the sheets of paper must also indicate on the top the number of views and, in case of multiple applications, the consecutive number of the design; they must not contain any explanatory text, wording or symbols other than the indication or the name or address of the applicant
8. the design must be reproduced on a neutral background and must not be retouched with ink or correcting fluid. It must be of a quality permitting all the details of the matter for which protection is sought to be clearly distinguished and permitting it to be reduced or enlarged to a size not more than 8 cm by 16 cm per view for entry in the Register and direct publishing in the Journal. The Institute will accept color representations. Where the representation is in color, the registration and the publication will also be in color.

• Repetitive Patterns – Where the registration of a design consisting of a repeating surface pattern is applied for, the representation of the design must show the complete pattern and a sufficient portion of the repeating surface.
• Typographic Typefaces – Where registration for a design consisting of a typographic typeface is applied for, the representation of the design must consist of a representation of a string of all the letters of the alphabet, upper case and lower case, and of all the Arabic numerals, as well as of a text of five lines produced with the typographic typefaces, all being in the size pitch
• Signature- The application has to be signed by the applicant or his/her representative

Grounds of refusing an application

• where the subject-matter of the application does not correspond to the definition of a design as set forth in Sec. 84
• where the design is contrary to public policy or accepted principles of morality. (Sec. 86 (4))
• where the design is not new as required by Sec. 86 of the Act.

Applicants have a right to appeal against any decision of the Managing Director to the Industrial Property Tribunal.

Registration and Issuance of Certificate(Regulation 52)

A registration certificate is issued after the expiry of sixty days from the publication of the design application without any opposition.

Priority

Priority may be claimed on the basis of a previous (first) application of a design filed in or for a State which is a party to the Paris Convention or a member of the WTO. Priority can only be claimed where the application for a design is filed within six months from the date of filing of the first application(s). Where a priority is claimed, the examiner should check whether:

a) the file number of the earlier application is indicated;

b) the filing date of the application for a registered design falls within the period of six months of the claimed priority date;

c) the previous application(s) has/have been filed in or for a State on the Paris Convention list or the WTO list;

d) the time limit to file a declaration of priority is complied with.

The examiner will examine whether the subject-matter of the priority application and the present application are the same. He will raise an objection only where a clear discrepancy is found. Where a deficiency has been found, the examiner will invite the applicant to remedy the deficiencies in the examination report. If the deficiencies cannot be remedied, the right of priority will be lost. Where the examiner finds that the applicant has lost a right to claim a priority, he/she notifies the applicant accordingly.

Does an industrial design registered in Kenya give protection abroad?

The answer is NO. An industrial design registered in Kenya is effective only in Kenya but the Kenyan application can be used to establish a priority date for a separate application made in another country.

Statutory cost:

From Ksh15, 000 onwards per design

Application Duration:

4-6 months with several stages of registration

Ownership duration:

15 years renewable, renewal fees paid every five years

REGULATION AND LEGAL FRAMEWORK

• The Constitution of Kenya
• Industrial Property Act 2001
• IP Regulations 2002
• Statute Law (Miscellaneous Amendments) Act no.11 of 2017
• Harare Protocol for the Protection of Patents and Industrial Designs of 1982

Legal Rulings in Kenya on Industry Designs

1. In The Matter Of Industrial Design Application No. Ke/D/2009/00940 Entitled “Juice Bottle” In The Name Of Malplast Industries Ltd And Opposition Thereto By Safepak Ltd.
2. In The Matter Of Industrial Design Application No. Ke/Id/2010/001069 Entitled “Container” In The Name Of Dynaplas Ltd And Opposition Thereto By Safepak Ltd