Author: Margaret Ogbonnah

Introduction

Industrial Designs establish the language of a product as well as the corporate branding and identity of an enterprise. This article seeks to explain the concept of industrial designs, the requirements for its protection in Nigeria and the benefits of protection to the rights holder, the consumers and the economy.

Conceptual clarification.

Industrial design is a form of intellectual property (IP) that relates to the aesthetic appearance of a product that gives it a special form. It can be in a three or two-dimensional shape. Industrial design cuts across a variety of products and is used to appeal to consumers. It is not to be confused with a Patent. A patent protects an invention that offers a new technical solution in an industry.
Meaning, the invention (either a process or product) must be functional. On the other hand, the Industrial design protects the appearance of the product, which need not be functional before its protected.

According to Section 12 of the Patent and Designs Act1 industrial design is described as any combination of lines or colors or both, and any three dimensional form, whether or not associated with colors, is an industrial design, if it is intended by the creator to be used as a model or pattern to be multiplied by industrial process and is not intended solely to obtain a technical result.

Registration of Industrial Designs
In Nigeria, by virtue of the provisions of the Patent and Designs Act, the right to registration is vested in the statutory creator, i.e., the person who, whether or not is the true creator, is the first to file or validly claim a foreign priority for, an application for registration of the design.2 Registration of an industrial design confers upon the registered owner the right to preclude any other person from doing any of the following act3;
a) Reproducing the design in the manufacture of a product
b) Importing, selling or utilizing for commercial purposes a product reproducing the design: and

c) Holding such a product for the purpose of selling it or utilizing it for commercial purposes.

Moreso, according to the Patent and Designs Act, the reproduction of a registered industrial design is not lawful merely because it differs in minor or
inessential ways from the design or because it concerns a type of product other than the type which the design is concerned.4 It is important to state that according to the Patent and Designs Act, when a statutory creator is not the true creator, the latter shall be entitled to be named as the true creator in the registration and this right cannot be modified by contract5. Moreover, if a supposed statutory creator files an application without the consent of the true creator, the rights in such registration shall be deemed to be transferred to the true creator.6

Additionally, when an industrial design is created by an employee within the course of his employment, the rights in such creation shall be vested in the
employer. This is also the case if the design was made in the course of a commissioned work. However, an employee who makes a design not in the
course of his employment but using the means of his employment, shall be entitled to fair remuneration. Or else, he can bring an action for enforcement7.
Finally, an application for the registration of an industrial design shall be made to the registrar who by virtue of the powers conferred on him by the Act, shall examine every application to make sure it is in compliance with sections 13 (1)
(b) and 15 of the Act. That is to say, the registrar shall check;
➢ whether the design is not contrary to public order or morality.
➢ whether the necessary information like applicant’s full name and address, a specimen of the design, etc., are provided and
➢ whether the prescribed fee has been paid.

It is pertinent to buttress that where the application does not comply with necessary requirements, the registrar shall reject the application. Any person
grieved by the decision of the registrar may appeal to the Court. 8

Protection of Industrial Designs

In Nigeria, an industrial design must be registered in order to be protected under industrial design law.When an industrial design is protected by registration, the owner is granted the right to prevent unauthorized copying or imitation by third parties. This includes the right to exclude all others from making, offering, importing, exporting or selling any product in which the design is incorporated or to which it is applied. In Nigeria, the right to a registered design lasts for 5 (five) years but may be extended for two consecutives periods of 5 (five) years each. Therefore, the total period any product can be registered for protection is 15 years9. The right of the design owner is protected within these years from infringement by the public.

Furthermore, it is necessary for the owner of a design to protect any industrial design under a registration system, by keeping the design confidential from the date of application for registration. This is absolutely crucial because the central requirement for design protection is generally, that the design must be “new”. Therefore, where new designs are to be showed to others, it is advisable to have confidentiality clauses in written agreements, clarifying that the design is confidential 10.

Finally, a design that has already been disclosed to the public, for example, by advertising it in your company’s catalogue or brochure may no longer be
considered “new”. A design becomes part of the public domain and cannot be protected after six months of exhibition, unless the priority of an earlier
application can be claimed.11

Infringement of Industrial Design
The right of a design owner is infringed if another person, without the license of design owner, does or causes the doing of any act which that other person is precluded from doing under section 6 and 9 of the patents and Design Act, as the case maybe. An infringement of the rights of the design owner shall be actionable at the suit of the design owner in question: and in an action for such an infringement all such relief by way of damages, injunction account or otherwise shall be available in any corresponding proceedings in respect of the infringement of other proprietary rights.

Remedies For Infringement of Industrial Design Rights.

In an action for infringement of Industrial design, all such reliefs by way of damages, injunctions or otherwise shall be available to the plaintiff as is available in any corresponding proceedings in respect of the infringement of other proprietary rights.

The remedies or reliefs available to a person whose Industrial designs rights have been infringed are:

Injunctions

Preliminary Injunction – Preliminary injunction restrains an accused infringer while a suit is pending to prevent irreparable injury to the owner of the
industrial designs. Preliminary injunctions are available and usually granted at the discretion of the courts on the following conditions:
• The existence of a legal right;
• a substantial issue to be tried;
• Balance of convenience: the court considers this where the violation and not the existence of a plaintiff’s right is denied;
• Irreparable damage: this is usually granted where the applicant is able to show that he will suffer irreparable damage or injury if the defendant’s acts
are not restrained;
• Conduct of the parties: here the court will consider the conduct of the parties. Thus, where the applicant is in substantial breach of contract, he
cannot get such order against a defendant alleged to be in breach of the same;
• Undertaking as to damages;
• Likelihood of success on the merits and
• Public interest.
Permanent injunctions – They are granted if the claimant is successful at trial. That is where he has established his right and there has been an actual or threatened infringement of that right.

Damages
Compensatory damages. These may include the industrial design owner’s loss of profits, an established royalty and a reasonable royalty. However, the court will not increase damages if the infringer acted in good faith, for example without knowledge of the owner of the industrial design or with a reasonable belief that he did not infringe or the industrial design was invalid. The main objective for the award of damages is to compensate the plaintiff for harm caused him.

Delivery up
The court in appropriate cases will order that all infringing articles in the possession, custody or control of a person found guilty of infringing an industrial
design be delivered up for destruction. An action for infringement of industrial design can be brought at any time. There is no time limit for bringing an action for infringement of industrial design.

Benefits of Protecting Industrial Design
The success or failure of a product rests, at least partially, on its look. Therefore, to successfully commercialise a product, an enterprise generally invests time and money to innovate, develop and create products with a new or original design. Below are some of the benefits afforded a creator of a registered
Industrial design.
a. Provision of Exclusive Rights: Protecting industrial designs is essential to enable one prevent unauthorised imitation of protected designs by
third parties. The owner of a protected industrial design has the right to prevent third parties not having his/her consent from making, selling,
exporting or importing articles bearing or embodying a design which is a copy, or substantially a copy, of his/her protected design, when such acts
are undertaken for commercial purposes.
b. Facilitation of Marketing and Commercialization: Since industrial designs are aimed at appealing to consumers, they can be an important
element of a company’s brand and business assets which may increase the market value of a company and its products and facilitate their
marketing and commercialization.
c. Generation of Revenue: Industrial design rights can be sold or licensed to another enterprise, which will then generate revenues for the rights
owner and in turn, generate revenue for the economy at large through the payment of taxes, licensing fees, permit charges, etc.

Conclusion

Conclusively, an industrial design is without doubt the language of a product as well as its identity. It drives a consumer’s choice and is a key factor in the
consumer’s purchase decision. Industrial designs and their protection are therefore, very important for both small- and medium sized enterprises (SMEs)
and larger companies.

References
1. Section 20 sub 1 Patent and Designs Act Cap. P2, Laws of the Federation of Nigeria 2004.
2. Section 20 sub 2 (a) Patent and Designs Act Cap. P2, Laws of the Federation of Nigeria 2004.
3. Section 18 sub 1 Patent and Designs Act Cap. P2, Laws of the Federation of Nigeria 2004.
4. Section 19 Patent and Designs Act Cap. P2, Laws of the Federation of Nigeria 2004.
5. Section 14 Patent and Designs Act Cap. P2, Laws of the Federation of Nigeria 2004.
6. Section 15 Patent and Designs Act Cap. P2, Laws of the Federation of Nigeria 2004.
7. Section 12 Patent and Designs Act Cap. P2, Laws of the Federation of Nigeria 2004.
8. Section 17 Patent and Designs Act Cap. P2, Laws of the Federation of Nigeria 2004.
9. Section 17 Patent and Designs Act Cap. P2, Laws of the Federation of Nigeria 2004.
10. https://www.wipo.int/export/sites/www/sme/en/documents/guides/customization/looking_good_nig.pdf

DISCLAIMER
This article is for information purpose, it may, or may not reflect the current position of the law and is therefore not intended to provide legal advice or
guidance on litigation or provide commentary on any pending case or legislation.

SUBSCRIPT

1 Section 12 of the Patent and Designs Act L.F N 2004
2Section 17 of Patent and Designs Act, L F N 2004.
3 Section 17 of Patent and Designs Act, L F N 2004.

4 Section 19 of Patent and Designs Act, L F N 2004
5 Section 14 of Patent and Designs Act, L.F.N. 2004
6 ibib
7 ibib
8 Section 15 of patent and Designs Act, L.F.N. 2004

9 Section 20 sub 1 of the Patent and Design Act L.F.N 2004
10 Section 20 sub 2 (a) of the Patent and Designs Act L.F.N 2004
11 Section 18 sub 1 of the Patent and Designs Act L.F.N 2004.