Design protection guarantees you the exclusive right to use a design, which includes making, offering, putting on the market, importing, exporting or using the product in which your design is incorporated or to which it is applied. If you give your authorisation, third parties can use your design in their products.
A design right adds value to a product. It makes a product attractive and appealing to customers, and may even be its unique selling point. Protecting valuable designs should be a crucial part of the business strategy of any designer or manufacturer. By protecting a design through its registration, the owner obtains the exclusive right to prevent its unauthorised copying or imitation by others.
Search widely online to avoid infringing someone else’s design.
Ensure that the applicant is the owner of the design, particularly if it has been produced by contractors.
Educate staff on their obligations and where necessary have them sign confidentiality agreements.
Application fees must be paid when applications are filed.
Check if someone else has registered a similar design
In order not to infringe the designs of others, it is better to check whether design rights already exist in Iceland, thereby avoiding spending time and effort developing something that others have rights to. Even though no one owns the rights to the design in Iceland, it is not necessarily open for copying the design, as the design may be protected by copyright law and marketing law.
It takes up to one month to process an application and do the formalities check. An examination of a design application takes normally one day. An applicant generally has two months to respond to any possible issues raised from an examination report. Design registration lasts for five years from the filing date of the application and may be renewed upon payment of a fee for four subsequent periods of five years, resulting in a total period of registration of twenty-five years. The registration ceased unless it is renewed.
Several databases containing information on designs that have been registered internationally may be found on the Internet.
The owner of a design can be an individual, a team, a company, an association or a partnership. Where two or more people own interests in a design, they must apply jointly. However, if applying as a company, partnership or association, do not apply using a trading name or a trust. If the applicant is not the designer, an assignment from the designer to the applicant must be attached.
It is vital that clear images accompany the application and that nothing other than what the protection is to apply to is contained in the pictures. The pictures shall clearly show the design in its entirety and from different viewpoints. The protection rests on what can be seen in the pictures. Both drawings and photographs may be used. A separate fee shall be paid for each picture beyond the first one. Key points for pictures:
Good quality pictures can prevent possible delays in the processing of applications.
Each picture may show the product from only one viewpoint. The pictures must be suitable for printing in black and white; photocopies of photographs are in most cases unusable. Good photocopies of drawings, however, are accepted.
When applying for protection of decorations, the image must show the decoration on the product in question.
If applying for registration for more than one design (product) in the same application (multiple registrations), the images must be labelled with numbers, signifying which image belongs to which design.
The overall appearance of the product and all its principal characteristics must be clearly indicated.
The images shall show the final appearance of the product. Thus, working drawings (with dimensions) are not accepted. It is too late to submit a better picture after a design has been registered and a picture of it has appeared in the ELS Gazette.
There is no requirement for a specific number of views. However, an applicant must provide sufficient views to fully display their design, which usually requires a number of views. traditional views are preferred (front, side and top) but perspective or isometric views are also acceptable. All views must show exactly the same design. This particularly applies to colour, as colour is usually a visual feature of the design.
In the case of goods intended for the same or similar use, where such goods are classified in the same category according to the Locarno Agreement Establishing and International Classification for Industrial Design, applications may be made for the protection of more than one design in the same application. If it is a multiple design application then each design should be clearly indicated, with each design shown on a separate sheet.
Sometimes a design is applied to a part of a complex product and that part can be readily assembled and disassembled from that product. If the component part qualifies as a product, then broader protection may be gained by defining this as a stand-alone part.
Keep in mind
After a design is filed, only very limited changes are allowed.
Keep a copy of all the documents (including the drawings).
Give each design a reference number or identifier to know them apart.
If a design gets registered, the protection given by registration takes effect from the priority date (usually the filing date).
An applicant can only claim that a design is registered once the applicant has received a certificate of registration. Do not assume that a design is registered when the application is filed.
Design is not legally enforceable until it has been registered, examined and certified.
An application for design protection can be submitted electronically (an Icelandic ID number is required) or a PDF form, along with all supporting documents, can be sent by email to email@example.com.
Not a residence in Iceland?
An applicant who is not residing in Iceland must appoint an agent who is a resident in the EEA area entitled and authorised to represent the case. This also applies to Icelanders who have a residence or principal place of business outside Iceland. If the applicant is not the designer, an assignment from the designer to the applicant must be attached.
Applications for international registration may be submitted to the Icelandic Intellectual Property Office or directly to the World Intellectual Property Organisation (WIPO). Forms for international registration can be obtained on the design forms site. Explanatory notes on the official application form DM/1. Please note that applications must be in English.
Applications for international registration must state the countries in which registration is requested. Designs can be protected in all Geneva Act member states. Please note that certain countries, such as the US and the Philippines, will only accept applications made in the designer's name. Be aware that laws and procedures can differ greatly from country to country.
No requirement is made for prior registration of a design in Iceland before applying for the international registration of a design. The base fee for an international application depends on the number of countries in which registration is requested i.e. fees vary from country to country. A calculator for international registration of a design is available here.