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How to protect your industrial design in the Philippines

Editha R Hechanova, Brenda P Rivera and Chrissie Ann L Barredo of Hechanova & Co look at frequently asked questions concerning the application and protection of designs in the Philippines

What is a design?

The Intellectual Property Code of the Philippines (IP Code) or Republic Act 8293, as amended, defines an industrial design as any composition of lines or colours or any three-dimensional form, whether or not associated with lines or colours, provided that such composition or form gives special appearance to and can serve as pattern for an industrial product or handicraft.

What are the requisites for registrability of a design?

To be registrable, an industrial design must be new or original. The following are not registrable as industrial designs:

  • Those dictated essentially by technical or functional considerations to obtain a technical result;
  • Those which are mere schemes of surface ornamentations existing separately from the industrial product or handicraft; and
  • Those which are contrary to public order, health or morals.

Can graphical user interfaces (GUIs) be the subject of an industrial design application?

Yes, provided it meets the definition of a design, and complies with the registrability requirements. There are no separate provisions relating to GUIs.

What type of examination is conducted for designs?

The Intellectual Property Office of the Philippines (IPOPHL) adopts an expeditious registration process for designs and are therefore registered without substantive examination, provided that all formal requirements are complied with, and all fees paid. Applicants, however, may request for a registrability report from the IPOPHL to benefit from the determination of novelty by the IPOPHL.

What is the degree of novelty required for designs?

A design shall not be considered new if it forms part of prior art. Prior art shall consist of everything made available to the public anywhere in the world by means of a written or oral disclosure, by use, or in any other way before the filing date or priority date of the application. The disclosure of information contained in the application during the six months preceding the filing date or priority date of the application shall not prejudice the applicant on the ground of lack of novelty (Section 119, IP Code). An industrial design shall not be considered new if it differs from prior designs only in minor respects that can be mistaken as such prior designs by an ordinary observer (Rule 1503, IRR).)

What is the procedure for acquiring a design registration?

A non-resident applicant must appoint a Philippine attorney-at-law or patent agent to prosecute his patent application before the IPOPHL.

To obtain a filing date, the patent application must contain: (a) indications allowing the identity of the applicant to be established; and (b) a representation of the article embodying the industrial design or pictorial representation thereof.

The IPOPHL will conduct a formality examination of the application, taking into consideration the following formality requirements: (a) whether it is one of those falling under the non-registrable industrial designs; (b) contents of the request for the registration of an industrial design; (c) priority documents, if with claim of convention priority; (d) proof of authority, if the applicant is not the designer; (e) deed of assignment, if applicable; (f) payment of all fees; (g) signature of the applicants; (h) identification of the designer; (i) contents of the description; and (j) formal drawings.

As stated above, there is no substantive examination for industrial designs. After formal examination, an industrial design application shall be published in the IPOPHL E-Gazette. Within 30 days from the date of publication, any person may present written adverse information concerning the registrability of the industrial design including matters pertaining to novelty while citing relevant prior art, which observations shall be taken into consideration in deciding the registrability of the design application.

Where the application meets all the formal requirements for registrability and the IPOPHL does not receive any adverse information after expiration of the 30-day publication period, the IPOPHL shall grant the registration of the industrial design.

Are there any special requirements for the drawings in a design application?

Yes. In addition to the common rules stipulated in the regulations for drawings of utility models and industrial designs, the drawings of an industrial design must comprise a sufficient number of views to constitute a complete disclosure of the appearance of the article.

When appropriate, surface shadings must be made on the drawings to show character or contour. Photographs of the design may be submitted instead of drawings. If colour is a material feature of the industrial design, the colour(s) must be reproduced in the drawings, or a statement must be made providing the colour(s) claimed indicating the parts of the articles which in such colour(s). Graphic representation of industrial designs, such as computer-aided drawings, may be accepted in lieu of ink drawings.

Can one application contain several designs?

Yes. One application may comprise more than one embodiment of an industrial design. A number of articles should be of substantially similar dominant design features that are embodied in a single design concept. They must relate to the same subclass of the international classification or to the same set or composition of articles.

One application may cover a ‘set of articles’ which is customarily sold or used together as a set, provided that each article has the same design or a substantially similar design. Where two or more articles are used together as a set of articles, the design of the set of articles may be protected as a design if the set of articles constitutes a coordinated whole.

What is the period of protection for designs?

An industrial design registration shall be valid five years from the filing date of the application and may be renewed for two consecutive periods of five years each, subject to the payment of the renewal fee, hence a total of 15 years. Renewal of the design registration may be made by paying the renewal fee within 12 months preceding the expiration of the period of registration. A grace period of six months after the expiration date is allowed upon payment of a surcharge.

How do you invalidate a design registration? What are the grounds for invalidation?

Any person may file a petition before the Bureau of Legal Affairs (BLA) of the IPOPHL to cancel the industrial design on any of the following grounds: (a) if the subject matter is not registrable within the terms of the IP Code; (b) if the subject matter is not new; and (c) if the subject matter extends beyond the content of the application as originally filed.

The invalidity of a design registration may also be raised as a defense and/or counterclaim in an infringement action which can be filed before the IPOPHL as an administrative action, or the regional trial court in a civil action.

How is design infringement dealt with?

In determining design infringement, the IPOPHL and the courts apply the ‘ordinary observer test’. In the said test, the determination should be made by ‘observers of ordinary acuteness’ giving the ‘degree of observation’ that a purchaser usually gives, as it is such persons, not experts, ‘who are the principal purchasers’ of such articles.

Only the design registrant or his successors in interest may file a civil or administrative action for infringement to recover damages and secure an injunction. Infringement of an industrial design registration is the making, using, offering for sale, selling, or importing of a registered design, or the use of a registered design without the owner’s consent.

Anyone who actively induces the infringement of an industrial design or provides the infringer with a component of a registered product, knowing it to be especially adopted for infringing the registered design and not suitable for substantial non-infringing use shall be liable as a contributory infringer and shall be jointly and severally liable with the infringer.

No damages can be recovered for acts of infringement committed more than four years before the institution of the action for infringement. The court may order the destruction of the infringing product including the materials and implements used in the infringement without compensation. Criminal action is available for a repeat infringement, and the penalty is fine and imprisonment.

What recent court decisions involving industrial designs have been issued?

Case one

Yatai International Corporation v Panasonic Electric Works Co Ltd and Panasonic Electric Works Sales Philippines Corporation [Appeal No. 10-2018-0003] – Decision issued on December 14 2020.

In 2009, Panasonic filed a complaint for infringement of industrial design and damages against Yatai, alleging that the appearance of the latter’s OMNI-branded switches, particularly switch model WWS 213-PK, was similar to Panasonic’s industrial design for ‘A Seesaw Switch’, which was covered by Registration No. 3-1997-12873. In its defense, Yatai alleged that its OMNI WWS-213 and WWS-213-PK switches are covered and protected by Industrial Design Registration No. 3-2004-000767, issued in favour of Yatai’s president; and that as such, they do not infringe upon Panasonic’s industrial design registration.

The director of the BLA ruled in favour of Panasonic, finding that Yatai’s OMNI switches are “essentially the same in appearance” to Panasonic’s industrial design. The director held that Yatai’s acts of distributing and selling these OMNI switches which are substantially similar to Panasonic’s Industrial Design Registration No. 3-1997-12873, without Panasonic’s consent and authorisation, constitute patent infringement. The director also found Yatai liable for the payment of temperate damages, attorney’s fees and costs of litigation. On appeal, the Office of the Director General (ODG) sustained the decision of the BLA director, in its decision issued on December 14 2020, but modified the award of attorney’s fees. Yatai appealed the decision of the ODG, where it is currently pending.

Case two

Alwin T Go v KPI Manufacturing Inc doing business under the name and style of KeyLargo Car Accessories Center [Appeal No. 14-2017-0001 / Title: A CAR MAT] – Decision dated December 19 2019.

KPI Manufacturing Inc (KPI) filed a petition for cancellation of Industrial Design Registration No. 3-2014-000155 for a car mat owned by Alwin T Go (Go), alleging that said design is not novel as it forms part of the prior art, and that Go is not the true and original designer of the car mat design subject of industrial design registration. KPI claimed that it has imported and sold car mats with similar designs since 2012 or before Go filed his industrial design application in 2014.

In his defense, Go maintained that he is the true and original designer of the car mat which he claimed to have created using a specific computer programme. The adjudication officer of the BLA denied the petition to cancel the industrial design registration of the car mat and held that the industrial design has not been anticipated by any prior art.

On appeal, the director of the BLA reversed the ruling of the adjudicating officer and granted KPI’s petition for cancellation, finding that KPI submitted sufficient evidence to destroy the novelty of Go’s industrial design. On appeal, the ODG affirmed the decision of the director of the BLA ordering the cancellation of Industrial Design Registration No. 3-2014-000155 for the car mat.

Which pieces of legislation govern design law in the Philippines?

  • The Intellectual Property Code of the Philippines (Republic Act 8293, as amended), and its Implementing Rules and Regulations;
  • The Revised Implementing Rules and Regulations for Patents, Utility Models and Industrial Designs, April 20 2011;
  • A.M. No. 10-3-10-SC or the 2020 Revised Rules of Procedure for Intellectual Property Rights Cases (IPR Rules), effective November 16 2020; and
  • Rules on Search and Seizure in Civil Actions, AM No. 02-1-06 SC, February 15 2002.

Are there any new legislations being proposed involving design?

The current 18th Congress is deliberating on the proposed revisions of the IP Code. For designs, there is a proposal to transfer the registration responsibility and authority to the Bureau of Trademarks. However, the requirements, rules, period of protection, and remedies affecting designs have no changes.

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Editha R Hechanova

President

Hechanova & Co

T: +63 2 804 2317

E: editharh@hechanova.com.ph

Editha R Hechanova leads Hechanova’s IP law practice. Her experience covers both contentious and non-contentious IP matters.

Editha is also the managing partner of Hechanova Bugay, Vilchez & Andaya-Racadio which specialises in the contentious aspect of IP law, e.g. enforcement, litigation, transactional and licensing. She has been cited as leading lawyer in IP law in the Philippines by the AsiaLaw magazine (from 2002 to 2021), and Who’s Who Legal Trademarks 2012 to 2021, and an MIP IP Star. She has been cited by the Asia Business Law Journal as one of the Top 100 Lawyers in the Philippines from 2018–2021.

Editha graduated from the University of the East with a business degree, major in accounting, magna cum laude, and is a certified public accountant. She is currently the President of the APPI, an association of professionals who passed the patent agent qualifying examination (PAQE).

Brenda P Rivera

Principal

Hechanova & Co

T: +63 2 804 2317

E: brenda.rivera@hechanova.com.ph

Brenda P Rivera is a principal and vice-president for Hechanova & Co. Her group conducts patent searches including freedom to operate searches, prepares patent applications, and research related to patents.

Brenda has more than 15 years of experience in patent prosecution work and she handles the firm’s patent prosecution teams, covering different fields of technology.

Brenda graduated from the University of the East, with a major in economics. She is a certified patent valuation analyst (CPVA) from the Business Development Academy, New Jersey, US.

Chrissie Ann L Barredo

Junior partner

Hechanova Bugay Vilchez & Andaya-Racadio

T: +63 2 804 2317

E: chrissie.barredo@hechanova.ph

Chrissie Ann L Barredo is a junior partner at Hechanova Bugay Vilchez & Andaya-Racadio.

Chrissie has over 15 years’ experience in IP law which includes litigation involving patents, trademark and design infringement and other violations involving IPR filed before the IPOPHL, the regular courts, and the appellate courts.

Chrissie is a certified patent agent and has passed the PAQE, and is an alumna of the South East Asia Patent Drafting Course (SEAD) conducted by the Federation des Conseils en Propriete Intellectuelle (FICPI), an international organisation of patent and IP practitioners. She obtained her bachelor’s degree in law from the University of the Philippines, and a bachelor’s degree in Science with a major in management information systems from the Ateneo de Manila University.

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