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Design Protection in Kenya: Tips & Pitfalls

There is growing interest in Kenya about the need of obtaining intellectual property protection on inventions. These relate to unique and useful products, processes and ideas created by a person. In the developed economies, innovations that create new or improved products (e.g. industrial processes or products such as smart phones) and new ways of doing things to improve efficiency and lower cost of production contribute significantly to the economic growth of a country. Without legal protection against copying of an inventor’s work, there would be under-production of products of the mind. Legal protection against copying provides necessary incentive to invent and enables an inventor to exploit his work commercially in order to recoup his investment.

For purposes of this article, I shall confine myself to how best to secure protection of the product of the mind relating to appearance of the shape of articles which is referred to as “industrial design”.

Design Protection in Kenya: Tips & Pitfalls
Patrick Ikimire is a partner at Kenyan LEX African member, Kaplan & Stratton.

What is an Industrial Design?

To put it simply an industrial design, is a conception of features of a shape, configuration, pattern, print, ornament, engraving, embossment or any other kind of impression applied to an article of any kind. This conception or design itself does not exist in abstract. It must be applied to or have reference to some specified article (e.g. a spoon). The article, on the other hand, does not constitute the design in itself. Businesses and individuals who design or create articles with unique and attractive dress or visual appearance should consider obtaining registration for their design products.

What are the conditions to obtain Registration?

It is important for a designer to understand from the start the conditions a design must fulfill for it to be registered. With this knowledge, a designer can then avoid including features or shape that would be objectionable in order for the application to be processed in a timely manner. The following conditions apply, (note the comments on each):

  • The designer should consider whether all or part of the design features, shape or pattern embodied in the article are new with respect to the class of articles they are applied to. The law requires that they should be new. This means that they should not have been disclosed to the public or used in any part of the world including Kenya prior to the date of filing the application.
  • What article is the design of the new shape, pattern or features to be applied to? The title or the name of the article to be given should be the commonly known one. Technical descriptions or vague names such as “assembly unit” should be avoided.
  • 2 actual samples or specimens of articles embodying the design features and shape applied for must be furnished. This ordinarily will not present a problem. However, does  this requirement still apply if the article concerned is a bulky one such as a car or an architectural building? In that case, do you deliver 2 samples of the cars or 2 samples of the buildings that embody the design? This is not practical. We have in several instances in the past successfully proposed and the registry has agreed to substitute the sample requirement with the provision of a scale model of the design article.
  • If the applicant is not the actual creator or designer of the design article or is a company, then it is necessary to indicate and produce proof of how the applicant acquired the ownership right to the design article from the actual designer or creator. Where the applicant is not the designer or the creator of the design, the ownership to the design may be demonstrated by way of an assignment (from the designer to the applicant) or the fact that the designer is an employee of the applicant.
  •  4 identical sets of representations clearly depicting the features and shape for which protection is sought should be submitted. These could be drawings or photographs.
  • A brief description of the essential design features and shape of the design article should be provided.

How to avoid common design mistakes

A design application or registration may run into problems of rejection from the registry. In addition, the registration could be attacked on grounds of invalidity from competitors in the market. Knowing the “minefield areas” and avoiding them at the designing stage is useful to a designer. The following are some of the “problem areas” which every designer should watch out for:

  • Novelty: The nature and extent of novelty required for the registration purposes is both universal and absolute. At the conception stage, a designer should ensure that he or she is not simply reproducing existing design features or making trivial or immaterial alterations to them.  And then claim to have created “new” design features. The design article created must substantially be distinguishable from what has existed before.
  • Individual character: This means that the design article, as compared to other similar design articles in the market, has a distinct “personality” of its own. Its overall appearance is unique and is different and distinguishable from others.
  • Functional Features: The law specifically excludes features or shape which is designed to assist in achieving a particular function e.g. a transparent glass in a window or shelf in a shop, the sole of a shoe or a handle.
  • Invisible Features: The law on design protects only features or shapes that are appealing to the eye. To appeal to the eye, they have to be visible. Design features that cannot be seen or seen easily when the article is in normal use (without lifting and looking for it) cannot be protected.
  • Statement of novelty: A designer is required to provide a concise statement describing the design features which he or she has created. This statement defines the scope of protection.
  • Basis of Right to Design: The applicant must ensure that he or she has the right to own the design article to avoid rejection by the registry or attack on the title of the applicant/owner in opposition, removal or infringement proceedings. If the applicant is not the designer or creator, then title to the design can be acquired by (i) the fact that the applicant is the employer of the designer and the employer’s resources were used to create the design article (ii) the designer as the owner of the design article had assigned it to the applicant (iii) the applicant commissioned the designer to create the design article and paid for it. It is necessary to produce the relevant documentary evidence to prove the title of the applicant in all the above scenarios.

In conclusion, although the law is never static, it is important for businesses and individuals in the design industry to understand the above requirements and take necessary steps at the initial stage of design conception to comply with them in order to secure effective protection and avoid potentially costly protracted examination procedures or contentious legal proceedings from competitors in the market.

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