Protection of Industrial Design
What is an Industrial Design?
An industrial design is a two-dimensional or three-dimensional design of the product. An industrial design means the set of features of a product which do not derive from the technical function of the product and which, either separately or in combination, form the shape, configuration, ornamentation, colours, texture and material of the product.
There is an important restriction to the scope of industrial designs: a spare part or component which is not visible upon normal use when assembled in the product is not considered an industrial design.
The registration application may cover a single industrial design, variants of one industrial design or a set of industrial designs.
The variants of an industrial design should produce a similar overall impression. The differences should appear solely in unimportant details from the point of view of overall impression.
A set of industrial designs is a logical group of industrial designs which pursuant to the Locarno Agreement Establishing an International Classification for Industrial Designs belong to the same class and are designed in the same manner. A logical collection means that industrial designs belonging to the set should be connected with each other in one way or another, e.g. via the purpose of use (e.g. a knife and a fork, kitchen furniture, a dinner set).
System of Protection of Industrial Designs in Estonia
According to Industrial Design Protection Act a filing or registration system is applied in Estonia as in most other countries for the registration of industrial designs.
In case of registration system, a registration authority (a patent office) shall not determine the novelty, individual character or industrial applicability of industrial designs, or the right of the applicant to file a registration application. The patent office shall only examine the compliance of the registration application (the formal and substantive requirements and filing dates of the application, etc.) with the formal requirements for applications.
The applicant for industrial design registration is responsible for the novelty, individual character and industrial applicability of the design and the right to become the owner of the design, and these requirements are considered to be met and the rights of the owner of the industrial design valid unless otherwise provided by the court.
The rights of the owner may be contested in court through administrative or civil procedures. Section 31 of the Industrial Design Protection Act contains provisions relating to the examination of formal and substantive requirements of registration application documents accepted for processing. The section provides information on the procedure and term for appeal against the decision.
Novelty and Individual Character of an Industrial Design
An industrial design is not considered to be new and is not granted legal protection if an identical or confusingly similar industrial design has been disclosed or registered prior to the filing date of the registration application for an industrial design or if the owner has disclosed the industrial design within twelve months before the filing date of the registration application or before the date of priority.
A person skilled in the art shall determine whether or not the industrial design has individual character.
As the subject matter that may be protected by industrial design rights is very broad, a decision shall be made by a person who is skilled in the specific subject matter.
As in today's network environment new information is accessed easily and quickly, the assessment of novelty and inventive step takes place on a worldwide basis. Novelty and individual character are assessed on the basis of information available to the public on the filing date of the application or on the priority date.
Information about industrial design law is provided in the Estonian Foreign Trade Herald No 2/1998 and in the Journal of Estonian Economy No 3/2002.
More information on industrial designs is avialable at the Estonian Intellectual Property and Technology Transfer Centre.
Scope of Legal Protection
The owner of an industrial design has the exclusive right over the industrial design which fulfills the conditions for granting protection. The owner of an industrial design has the exclusive right to manufacture products according to an identical or confusingly similar industrial design and to distribute, sell, import and export them in the Republic of Estonia.
The term of validity of the registration shall be five years from the filing date of the registration application. The registration may be renewed for a period of five years up to a total term of twenty-five years from the filing date of the application. A state fee shall be paid for the renewal of the term.
The rights obtained by registration are restricted by territory, i.e. an industrial design registered in Estonia is protected on the territory of the Republic of Estonia.
The scope of protection of an industrial design shall be determined on the basis of the reproduction of the industrial design.
Variants of an industrial design shall each be given independent legal protection. A set of industrial designs acquires legal protection as a whole (manufacturing a confusingly similar set is considered infringement of the exclusive right).
Limitations to Legal Protection
The owner of an industrial design has no right to prohibit the following acts:
- use of the industrial design within the construction or equipment of a vehicle which is registered in a foreign state, when such a vehicle temporarily or accidentally enters the territory of the Republic of Estonia;
- private use or use for study purposes of the industrial design (noncommercial use);
- use of the industrial design in experiments concerning the industrial design itself;
- distribution, sale, offer for sale or importation, exportation or stocking for the aforementioned purposes of products manufactured according to the industrial design and put on the market in the Republic of Estonia or in the State party to the Agreement of the European Economic Area by the proprietor of the industrial design or with the owner's consent;
- use of the industrial design by a person who, prior to the filing of the registration application for an industrial design, has in good faith and independently of the applicant used the industrial design in Estonia or has made serious preparations for the use of such industrial design (right of prior use).
Requirements for Content and Format of Industrial Design Applications and Procedure for Filing Thereof
In order to obtain legal protection in Estonia, an industrial design must meet the following criteria:
- be new,
- have individual character,
- be industrially applicable,
- be registered in the Register of Industrial Designs.
The application for the registration of an industrial design shall be filed with the Estonian Patent Office.
Registration applications may be filed with the Patent Office in person or by post. A registration application can be electronically filed via the portal of electronic filing.
Registration documents must be submitted in typewritten form.
A person who applies for industrial design registration may perform procedures relating to the registration of a design either by himself or through Estonian patent attorneys.
A person with no residence, seat, commercial or industrial enterprise operating in Estonia must authorise a patent attorney to perform acts related to the legal protection of industrial designs.
Registration applications must be filed in Estonian.
State fees shall be paid pursuant to the State Fees Act by bank transfer direct to the Ministry of Finance of the Republic of Estonia Account:
- SEB - IBAN EE 89 1010 2200 3479 6011 ; BIC / SWIFT code – EEUHEE2X ; Tornimäe 2, Tallinn
- Swedbank - IBAN EE93 2200 2210 2377 8606 ; BIC / SWIFT code – HABAEE2X ; Liivalaia 8, Tallinn
- Danske Bank - IBAN EE 40 3300 3334 1611 0002 ; BIC / SWIFT code – FOREEE2X ; Narva str 11, Tallinn
- Nordea Bank Finland PLC - IBAN EE 701 7000 1700 1577 198 ; BIC / SWIFT code – NDEAEE2X ; Liivalaia 45, Tallinn
Reference number of the Estonian Patent Office 2900082362, reference number of the Board of Appeal 2900074422.
Registration application forms are available at the Estonian Patent Office or can be printed out at the application forms web page.
The Registration Application Comprises of the Following Documents:
- a request for the registration of an industrial design (in a single copy);
- the reproduction of an industrial design (in two original copies) (RTL 22.01.1998, 14/15, 106, p 9.1.);
- documents certifying payment of the state fee;
- the power of attorney if the registration application is filed through an Estonian patent attorney;
- documents certifying priority if priority is claimed.
The right to apply for industrial design registration and to become the owner of an industrial design shall belong to the author. In case the industrial design is created in the performance of duties of employment or contractual obligations (i.e working for another person), the right to apply for the registration of an industrial design shall belong to the employer or contractor. The author shall have the right to a fair share of the profit received from the industrial design.
The industrial design certificate or an excerpt from the Register of Industrial Designs shall be a document certifying the registration of an industrial design. This does not certify that the industrial design is new, has individual character or is industrially applicable.
Industrial Design Protection Act
Paris Convention for the Protection of Industrial Property
Locarno Agreement Establishing an International Classification for Industrial Designs
Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs
The Common Regulations under the 1999 Act (Geneva), the 1960 Act and the 1934 Act of the Hague Agreement (pdf, 132 kB)
International Registration of Industrial Designs
International registration of industrial designs takes place under the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs in the register of the International Bureau of the World Intellectual Property Organization (WIPO).
The international application can be filed by any person that is a national of a State that is a Contracting Party of the Geneva Act of the Hague Agreement, or that has a domicile, a habitual residence or a real and effective industrial or commercial establishment in the territory of a Contracting Party.
The applicant files the international application either directly with the International Bureau of WIPO or through the Patent Office under the Common Regulations under the 1999 Act, the 1960 Act and the 1934 Act of the Hague Agreement [PDF] and the Administrative Introductions for the Application of the Hague Agreement [PDF] either in English or in French.
The applicant designates in the application the Contracting Parties, in which the protection for the industrial design is requested. An Estonian applicant may designate also Estonia.
The applicant pays the fees relating to the international registration to the International Bureau of WIPO as prescribed in the Common Regulations and Administrative Introductions.
The forms of applications for international registration are available on the homepage of WIPO.
The International Bureau of WIPO
- checks if the application complies with the formal requirements and in case of irregularities invites the applicant to make the corrections within the prescribed time limit;
- fixes the filing date of the application, registers the industrial design as a subject of the international application;
- publishes the international registration;
- informs each designated Office about the published international registration and sends a certificate to the holder;
- in case of possible refusal by the Contracting Party the International Burea checks the compliance of the notification of refusal with the requirements and informs the holder about that;
- records changes concerning international registrations, publishes them in the International Designs Bulletin and informs the designated Office about that.
Community designs are registered at the Office for Harmonization in the Internal Market (OHIM) under the Council Regulation 6/2002/EC on Community Designs (Official Journal of the European Union L 003,05.01.2002, pp. 1-24).
The Office for Harmonization in the Internal Market (OHIM) located in Alicante in Spain registers the Community designs as from 1 April 2003. Community Designs registered by the OHIM are entitled to protection in all EU Member States.
Similar formal examination system is used both by the OHIM and the Estonian Patent Office. OHIM does not examine the industrial design as to the substantive criteria. Only the formal requirements of the registration of the industrial design (the forms of the required documents, contents, filing dates etc.) are examined. Upon filing a relevant application the OHIM serves the right to invalidate registered designs if they do not meet the requirements.
The Design Courts in the member states of the European Community may decide that the registered design should actually not enjoy legal protection if during the course of the alleged violation of legal claim proceedings action, the opposing legal action is presented to invalidate the design.
Community design applications may be filed directly with the OHIM (electronic filing is possible) or the Estonian Patent Office. The Estonian Patent Office will then forward the application to the OHIM within two weeks from the filing date of the application and a corresponding notice will be transmitted to the applicant. A state fee shall be paid to the Estonian Patent Office for forwarding Community design applications to the OHIM. The order of filing Community design application has been established by the Regulation of Industrial Design.
Community design applications must comply with formal and substantive requirements prescribed by the Community Design Regulation and Implementing Regulations. The state fee prescribed by Article 36(4) of the Community Design Regulation must be paid directly to the OHIM. The Estonian Patent Office shall neither accept nor forward any other documents and letters filed with the OHIM.
Further information is available on the homepage of the OHIM.
Regulation No 6/2002/2002/EC of the EU Council on the Community Design provides protection also to the unregistered designs. In order to obtain protection, the unregistered designs should meet the same substantive criteria as the registered designs: they have to be novel and distinctive.
Protection will become valid since the publication date of the design in the European Union. Publication may take place via placing the design on sale or through preceding marketing or advertising. Protection will last for 3 years.
The main difference in the level of protection lies in the fact that the registered Community design is protected against intentional copying as well as against the independent elaboration occurrence of a similar design. Unregistered design is protected only against intentional copying.