IP 2.6 REQUIREMENT FOR REGISTRATION OF DESIGNS
By Section 13 of the Patents and Designs Act 1970, the design must:
- Be new.
- Not be contrary to public order or morality.
The requirement of newness.
The universal standard of newness must be satisfied… it must not have been published anywhere before the date of application. Section 13 (3).
In Chukwumereije V. Patkum Industries, protection was declined where the court found that the goods are already being sold in the market by the plaintiff.
In Iyeru Okin Plastic V Metropolitan Industries, the court invalidated the plaintiff’s registration on the ground that the school sandals (which were the subject matter of the protection) were already being sold in the market.
- The owner can prove that he could not have known that the design had been published.
- Where the publication in question was made in an officially recognised exhibition ( within 6 months from application).
- The publication or disclosure was made under conditions of secrecy or confidentiality or where the applicant (for a nullity decree) had an interest in the subject-matter.
In F.O Ajibowo V Western Textiles Mills, showing the design to a textile mill that was going to publish the designer’s work did NOT amount to publication. As the disclosure was confidential and the textile mill had an interest in the subject matter.
In Iyeru Okin Plastic Industries V Metropolitan Industries, the court held that the requirement of newness was defeated when the plaintiff’s shoe soles designs were already published a year ago.
It depends on the facts of the case and the evidence adduced-Controlled Plastic V Black Horse Plastic.
Note that minor or inessential improvement from an earlier invention would not satisfy the requirement of newness.
Newness thus means a totally new design or the application of a known design to a new subject matter in a totally different way as was done in Saunders V Weil where the Westminster Abbey was ingenuously represented in the handle of a spoon.
The design must not be Contrary to Public Order or Morality.
The test is an objective test. What impression would a reasonable man get from the design? This test flexible as public morality is affected by time, place and societal value-In Masterman’s Design,
- Works of sculpture except models or casts intended to be multiplied by industrial process.
- Wall plaques and medals.
- Printed materials of a literary or artistic character, including book jackets, calendars, certificates, coupons, dressmaking patterns, greeting cards, maps, plants, postcards, stamps, trade advertisement and trade forms.