Issue 6 2019

42 Acquisition International - Issue 6 2019 May19097 A design refers to the features of shape, configuration, pattern or ornamentation, which gives a product a unique appearance. As such, a design can be protected as an Intellectual Property Right. Ms Navindi Naotunna from Julius & Creasy takes time to provide us with a detailed insight into the Intellectual Property Right which protects designs. n Sri Lanka, the design system is governed by the Intellectual Property Act No 36 of 2003 (the Act). The Act defines an industrial design as “ any composition of lines or colors or any three dimensional form, whether or not associated with lines or colors, that gives a special appearance to a product of industry or handicraft and is capable of serving as a pattern for a product of industry or handicraft ” (section 30). However, anything in an industrial design, which serves solely to obtain a technical result, is not protected. An industrial design receives protection only when it is new and is not anti-social. In addition to this, an industrial design is considered new when it has not been made available to the public, or anytime through description, use or in any other manner before the date of the application for the registration of the industrial design, or before the date of priority validly claimed in respect thereof (section 31(1)). However, the novelty is not destroyed if a design had been displayed at an official or officially recognized international exhibition, but instead as an application for registration which had been made within the period of six months of such display. The requirement regarding anti-social means that it does not consist of any scandalous design, is not contrary to morality or public order or public interest, nor is unlikely to offend the religious or racial susceptibilities of any community (section 29). The right to obtain protection of an industrial design belongs to its owner (section 32(1)). The owner is generally the creator of the industrial design or the successor in title of the creator. However, this general rule is subject to two exceptions. If the industrial design is created by an employee during the course of employment, then it belongs to the employer unless otherwise agreed by the parties. An industrial design created on commission belongs to the person who commissioned the work unless the parties have agreed otherwise. Registered design rights provide a designer with an exclusive right to exclude other parties from using or imitating their design for up to five years from the date of the receipt of the application for registration (section 45). It may be renewed for two consecutive periods of five years (section 46). Under section 47, the registered owner of an industrial design is entitled to the following exclusive rights in relation to the industrial design: a) To reproduce and embody such industrial design in making a product; b) To import, offer for sale, sell or use a product embodying such industrial design; Protection of Designs in Sri Lanka I c) To stock, for the purpose of offering for sale, selling or using, a product embodying such industrial design; d) To assign or transmit the registration of industrial design; e) To conclude license contracts involving the industrial design. Individuals and businesses are prohibited from doing any of these acts without the consent of the registered owner of the industrial design (section 47(2)). However, any person can exploit those rights for non-industrial or commercial purposes without the authorization of the owner of the rights. Also, it does not preclude a third party from performing any of the rights after a product bearing the registered design has been lawfully manufactured, imported, offered for sale, sold, used or stocked in Sri Lanka. The court has the power to declare the registration of an industrial design null and void. An application can be made by any person who has a legitimate interest, including the Director General (section 60). Sri Lankan designers can obtain design protection in other countries, typically through one of two methods. • Making a new application in each foreign country (national application) • Making a new application in each foreign country within six months of their Sri Lankan application and specifying that they are claiming the date on which they lodged their Sri Lankan application as the priority of their application, by virtue of the Paris Convention for the Protection of Industrial Property. Sri Lanka is a party to the Paris Convention and the TRIPS Agreement which applies to Industrial Designs. Lastly, an Industrial Design can also be protected under Copyright and Unfair Competition where appropriate.