A “design” is an intellectual property right which confers protection to the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colors, shape, texture and, or materials of the product itself and, or its ornamentation.

In turn, a “product” is in this context meant to refer to any industrial or handicraft item, other than a computer program. This includes items intended to be assembled into a complex product, packaging, get-up, graphic symbols and typographic typefaces.

Thus, in simplistic terms, a design is that intellectual property right which protects a product’s aesthetic features. Such protection would be conferred in terms of the Patents and Designs Act, Cap 417 of the Laws of Malta. Naturally, this definition leaves scope for overlap between the protection conferred via design rights and that conferred by copyright. Indeed, the Patents and Designs Act specifically provides that a design right registered in terms of the Patents and Designs Act may also be eligible for protection under the Copyright Act as from the date on which the design was created or reduced to a fixed form.

Crucially, the protection conferred by a design right is limited to aesthetics. Technical functions or features of appearance which are solely dictated by the technical function do not fall within the scope of design right protection.

Protection & Registration

Design right protection is conferred subject to successful registration with the Malta Industrial Property Registrations Directorate, namely, Malta’s IP Office. The concept of unitary Registered Community Design Rights as well as unregistered design rights also exist, although this article focuses exclusively on registered design rights in terms of the Patents and Designs Act.

For a design to be registered in terms of the Patents and Designs Act, it must satisfy two main criteria, being, novelty and individuality.

The novelty requirement is fulfilled if no identical design has been previously made available to the public prior to the filing date of the relevant application (or prior to priority date, if priority is claimed).

On the other hand, a design is considered to have individual character if the overall impression that it has on an “informed user” is different from the overall impression produced by any other design which has been made available to the public prior to the design application (or prior to priority, as applicable).

Term of Protection

As has been seen in previous installments of this series, intellectual property rights carry various terms of protection, each varying from each other. In the case of designs, an initial five-year protection term is granted upon successful registration. This term can be subsequently renewed for more five-year terms, up to a total of twenty-five years.

Renewal is subject to an administrative fee and may only be made from six months prior to the expiration of the relevant protection term.

Non-Registrable Features

As noted earlier, features of a product which are solely dictated by technical functions or which must necessarily be reproduced in their exact form and dimensions for the product to function are excluded from the scope of design protection. In addition, however, it should also be noted that a design serving the purpose of allowing multiple assembly or connection of multiple interchangeable products within a modular system is excluded from registration. Likewise, are designs which are contrary to public policy or morality and designs which consist in certain protected symbols, such as Malta’s national flag, or presidential or episcopal bearings and flags.

Classification

Similar to trademarks, design protection is also conferred based on a classification system. In this respect, the Patents and Designs Act adopts the “Locarno Classification” system, established in terms of the Locarno Convention of 1968. This system classifies goods into 32 different classes in terms of their purposes and, subsidiarily, according to the object they represent. For instance, class 17 classifies musical instruments, which class is then further organized into various types of musical instruments.

Design Rights & Infringement

Upon registration of a design, exclusive rights are granted to the owner, which rights may face certain limitations.

For instance, the owner of the registered design can prevent third parties from making use of the aesthetic features of a design without their consent. However, such right is limited by way of for example a limitation over private and non-commercial use. Other exemptions include but are not limited to use for experimental or educational purposes.

It should be noted that first instance civil infringement proceedings are to be brought before the Civil Court, First Hall. Where infringement is found, the Court may order various measures including the destruction of the product violating the design right. Declaratory actions and injunctions are also possible.

The concept of acquiescence for a continuous period of 5 years is also present under Maltese Law such as for actions of invalidity which cannot be initiated if the relevant proprietor was aware of the infringing use for a continuous 5-year period.