What is an industrial design?

An industrial design refers to the ornamental or aesthetic aspect of an article. This may consist of three-dimensional features like the shape or surface of an article, or a three-dimensional feature such as patterns, lines, or colours.ⁱ

A design is thus a pattern or representation visible to the eye and applicable to a manufactured article. While the design enhances the article’s market appeal and forms part of the article itself, it is essential to recognise that the term ‘design’ pertains specifically to the features of shape, configuration, pattern, or ornament applied to an article--not the article itself. Industrial designs protect only the visual features of a product.ⁱⁱ

What does it mean to register an industrial design?

The registration of an industrial design in Uganda is governed by the Industrial Property Act, Cap 224 and the Industrial Property Regulations S.I 27 of 2017, which outline the requirements and procedure for registration.

To qualify for registration, a design must not to the proprietor’s knowledge, have been in use by a person other than the applicant at the time it was adopted. In other words, the design must be original or new, with substantial differences between the new design and any existing designs applied to similar articles. A mere slight change in outline or configuration does not suffice for registration.

The two critical conditions for protection are novelty and individual/distinctive character. A design is deemed novel if it has not been disclosed to the public before; it is considered original if it significantly differs from known designs or combinations thereof. A design has individual character if its overall impression on an informed user differs from any earlier public designs.ⁱⁱⁱ

The registration system operates on a first-to-file basis, meaning that if multiple parties independently create the same industrial design and seek registration, priority is granted to the earliest application.

Upon registration, the owner gains exclusive rights over their design and can prevent others from using it without permission. This includes prohibiting third parties from:

a) Reproducing the industrial design in the manufacture of a product,
b) Importing, offering for sale and selling a product reproducing the protected design, or
c) Stocking that product to offer it for sale or sell it.^iv

A registered design protects the appearance of all or a part of a product, which may arise from the shape, lines contours, colours, texture, or materials of the product itself and/or its ornamentation.

What is considered to be an infringement of an industrial design?

Infringement occurs when someone applies a registered industrial design or a substantially similar one to an article, for sale, rental, or exposure for sale, without permission from the owner.

A registered design may be infringed in two primary ways:

a) The infringing article bears a design which is exactly the same as or identical to that which has been registered; or
b) The infringing article bears a design which is not substantially different from which has been registered.

To claim infringement, the owner must demonstrate that:

1. They possess a valid registered industrial design.
2. Another party is using the design or a design not differing substantially from it, applied to the same product.

The owner must prove that an ordinary observer, paying typical attention as a purchaser would, would perceive both designs as substantially similar. The court will find an infringement if such resemblance could mislead consumers into confusing one product with another.

When assessing whether a design is identical or similar to a registered design, the courts conduct a visual comparison while considering the following factors:

a. The nature of the goods to which the industrial design was applied;
b. The intended purpose of such goods;
c. The method of use of the goods;
d. The complementarity of the goods;
e. Whether the goods were in competition with each other;
f. The respective distribution channels of the goods;
g. The relevant consumer circles;
h. The degree of freedom of the designer in developing the design; and
i. The usual origin of the goods.

If an alleged infringement appears substantially different from the registered design as a whole, it will not constitute infringement.

What are some of the determined cases on industrial designs?

There have been only two decided cases regarding industrial designs in Ugandan courts:

Conclusion

The registration of industrial designs is key in protecting creative works and safeguarding against unfair competitive mechanisms. The courts are also willing to enforce and protect the rights held by owners of industrial designs as seen in the two courts however all this protection starts with registration as discussed earlier.