Is there an expiry date on novelty?
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Unbeknownst to us, protection of intellectual property exists everywhere, touching every aspect of our lives. For example, the smartphone we use carries a various protection, ranging from design to brand, copyright and patent.
Some time ago, the Apple vs. Samsung case became the talk of the town. The dispute between the two tech giants went on for seven years. In one of its lawsuits, Apple accused Samsung of plagiarising the shape and features of Apple smartphones. Three years later, Apple won the lawsuit. Samsung then had to pay $120 million to Apple.
The battle didn’t stop there. For seven years, the two companies squared off in courts around the world. In 2018, both parties finally settled their cases. In the end, Samsung had to pay $543 million to Apple for violating Apple’s design patents.
In Indonesia, the design of a product is protected under Law No.31 2000 on Industrial Design or Industrial Design Law.
Compared to copyright and trademark, industrial design requirements are difficult to meet. According to the Directorate General of Intellectual Property (IPR) website, there are approximately 66,000 registered industrial designs and more than 1 million registered trademarks.
A design has to be registered to obtain legal protection. Indonesia applies the principle of novelty, not the principle of originality. It means that industrial design protection is granted to those who registered their design first, or the first to file. This is what separates protection of industrial design from copyright which arises automatically based on the declarative principle.
Novelty itself does not last forever. The protection only lasts for ten years and cannot be extended. The limitation is applied considering the fact that a design of a product is aimed at attracting consumers, while customer interest changes over time and along with changes in the necessities of life.
Can all creation be protected?
Industrial design protection covers clothes, food products, home appliances, jewellery, musical instruments, sports equipment, games and other creations.
Industrial design can protect the shape, configuration, or pattern of a product. However, not all silhouette designs can be protected. Raysha, a legal consultant, explained that for a silhouette design to be eligible for protection, it cannot stand alone, but has to be part of a product packaging and by considering the intended use.
Configuration focuses on the combined shape, while pattern is a combination of lines, colours or both. Therefore, the designer can choose what element they want to protect, whether it’s the shape, pattern, or the combination of the three elements.
What’s more unusual is that industrial design protection can be granted partially or fully for a product, depending on the novelty element which sets apart one design from the others.
For example, when a brand registers a bottle design. Protection can be granted only to the bottle cap because the design of the bottle itself already exists. Industrial design emphasised the aesthetic value or outer appearance of a product and whether it can be mass produced.
The industrial design module issued by the Directorate General of Intellectual Property explained that aesthetic impression must be able to be captured by the senses and is the result of the creation of shape, configuration, or lines and colour pattern.
According to Raysha, more in-depth explanation about aesthetic impression is necessary to avoid misinterpretation as aesthetics, the philosophical study of beauty, is subjective depending on the particular context.
The image below is an example of a protected design. Leather jacket designed by Novembria Dwi Triasari obtained protection from the Directorate General of Intellectual Property (IPR) in 2017.
Industrial Design Law vs. the knockoff culture
Like an endless tunnel, the culture of imitating also doesn't seem to have an end. While it is true that there is nothing new under the sun, a distinguishing factor is crucial in marketing a product so that consumers know where the product came from.
Indonesians are undoubtedly familiar with the ATM (OIM) principle-observe, imitate, modify-. In industrial design, the OIM technique can be applied as long as the design has been modified or is different from the original design. People often have misconceptions of this modification or distinguishing factor, which resulted in plagiarism allegations.
This happened in the Gucci vs. Forever 21 case, where Gucci sued Forever 21 for allegedly plagiarising its iconic designs, the blue-red-blue and green-red-green stripe combinations.
Image: Gucci (left), Forever 21 (right)
Under the Industrial Design Law, the IOM principle can be implemented by taking into consideration the product’s distinguishing elements and factors. This distinguishing element is what can be protected, although it is only a small part of the product.
For example, ‘A’ and ‘B’ watches both have a round design. If ‘B’ adds diamonds on top of the round surface, then it can be protected.
From the Industrial Design Law point of view, the more modification a product has, the less likely it is to give rise to plagiarism accusations.
However, it is important to remember that neither the Industrial Design Law nor the OIM principles can be used as solutions to the rampant culture of imitation if we can’t break free from the comfort zone. As Achmad Iqbal of the Directorate General of IPR said, “We should be ethical designers.”