KENYA – ARIPO

• APPLICANTS WHO MAY APPLY FOR INDUSTRIAL DESIGN PROTECTION

  • Following can file Design Applications:
    a). Author of the Design
    b). Employer of the author if Design made during course of employment
    c). Person contracting the author to make the design
    d). Person to whom the author has assigned the design in writing.

    Two or more persons owning interests in the design must apply jointly.

• REQUISITES FOR FILING INDUSTRIAL DESIGN APPLICATIONS
  • • Copy of the drawings;( six views such as front, rear, left side, right side, top plan and bottom plan views. And additional drawings such as perspective and cross-sectional views also may be submitted) – photographs in jpg format
    • The full name and address of each creator;
    • The full name and address of each applicant;
    • Domicile and Nationality of the applicant;
    • The name of article to which the design is applied;
    • The filing date, application number and country of the priority application; and
    • The priority document ;
    • Statement of Novelty in respect of the articles to which industrial design is applied to.  However, not required while registering wallpaper, lace or textile articles;
    • Full payment of fees;
    • Languages in which to file the applications are English.  Rest of the languages have to be accompanied with certified translations;
    • Representation setting out the details of the agent representing the applicant if not domiciled in the member states’ territory;
    • Applicant to designate states in whose territory protection sought;

    Statement of Novelty: Novelty refers to originality, something new or unusual.  In this context, if the examiner so deems necessary, may direct the applicant to endorse the application and the representations with a brief statement of novelty that he claims over the designs so submitted for registration.

    Prior Disclosure destroys novelty of the Design so extreme care has to be taken to maintain secrecy of the Design. Applicant is will lose it’s Novelty if it is disclosed.

• KINDS OF INDUSTRIAL DESIGNS REGISTRABLE

  • To come under the scope of registration, a Design should:

    1. Be new and / or original
    2. Not have been disclosed to the public anywhere by publication in tangible form or by use in any other way prior to the filing date or else applicant is will lose it’s Novelty if it is disclosed.
    3. Be significantly distinguishable from known designs or combination of known designs.
    4. Not contain scandalous or obscene matter, or be contrary to public order or morality.
    5. Not be a mere mechanical contrivance.
    6. Be applicable to an article, should appeal to the eye.Original here means, originating from the author of such a design and includes those cases which though old in themselves , are new in their application as well.

    Aspects of Designs registrable:

    • Two Dimensional, Three Dimensional, general appearance of a design.
    • Contours, Colours, Shapes and Textures
    • Material out of which the design is made
    • Decoration of the design
    • Packaging, Graphic Symbols, Typographic Typefaces
• KINDS OF INDUSTRIAL DESIGNS NOT REGISTRABLE
  • • A drawing or a model contrary to public order or morality.
    • A drawing or a model that relates to a computer program.
    • A drawing or a model whose characteristics are solely dictated by technical function of the product to which it relates.
    • A product that needs to be combined with another product, so that each can perform its function.
    • Designs which have been disclosed to the public anywhere in the world by publication in a tangible form or by use or in any other way prior to the filing date.
    • Designs which are not significantly distinguishable from known designs or combination of known designs    or
    • Comprises or contains scandalous or obscene matter.
    • Designs contravening Islamic Law.

    ParityPatents through it’s associate Law Firms in Kenya , is at hand to help you with Industrial Design registration and prosecution.

• STEPS TO INDUSTRIAL DESIGN REGISTRATION
  • 1. Finding out whether such a design has been registered previously.
    2. Preparing a representation of the design
    3. Identifying the class of design.
    4. Providing a statement of novelty.
    5. Including a disclaimer that the design has not been in the public domain at any point in time.
    6. Claiming a priority date if the design Is registered in other countries.
    7. Determining the fee to be paid.
    8. Ensuring all enclosures are attached.
    9. Complying with objections if any.
    10. Providing full details pertaining to contacts and addresses.

    ParityPatent along with specialised Industrial Design Lawyers and Attorneys in Kenya can assist you comprehensively with registration and protection of new Industrial Designs at ARIPO Office .

• EXAMINATION PROCESS OF INDUSTRIAL DESIGNS

  • Applications may be filed either at:

    1. The Industrial Property Office referred to as the Receiving Office of any of the contracting states.
    2. Directly with ARIPO.

    Domiciled applicants need not be represented by agents. However, applicants whose ordinary residence or principal place of business is outside the contracting state in which protection is sought, have to be represented by agents.

    Upon receipt of the applications at the receiving offices, they are numbered & dated and verified to ensure compliance to form is complete. Deficiencies if any, are communicated to the applicant for rectification within 2 months from the date of notice, failing which the application is deemed abandoned.

    A complete and proper application is transmitted to the ARIPO office from the receiving offices within 14 days from the date of filing.

    Upon receipt of the application at the ARIPO office, the application is dated and is given an ARIPO number. Verification ensuring compliances is conducted. Any requirement not found complied with, the applicant is notified to carry out the corrections within 2 months, failing which, the application is liable to be refused registration.

    There is no Substantive examination conducted by Botswana.

    Formalities examination relating to proper applications and rectified applications is carried out.

    A request for conversion into national applications may be made within 3 months from the date of refusal by ARIPO. Once converted, the designated states may refuse protection of the design in their territories on the basis of non –compliance of national laws and / or protocols as the case may be, within 6 months.

• PUBLICATION AND REGISTRATION OF INDUSTRIAL DESIGNS

  • However, once all the compliances are met and within 6 months from the date of notification of compliance of formality requirements, ARIPO office will register and public the designs on behalf of the designated states subject to payment of registration and publication fee by the applicant.

    Designs will then be registered in the Designs register and published in the ARIPO journal and Certificate of Registration issued. Copies of the registration certificate along with copies of reproduction of designs are transmitted to the designated states.

    Designated states will then register the design in their national registers and publish the registered design in their national registers.

• TYPES OF INDUSTRIAL DESIGN APPLICATIONS KENYA – ARIPO

  • Ordinary application.
    An ordinary application does not claim priority.

    Convention application calming priority .
    A convention application claims priority of an application filed previously in a convention country.

    (Deadline for claiming priority for a design application in ARIPO is 6 months from the filing date of the priority application)

• TERM OF INDUSTRIAL DESIGN PROTECTION

  • Protection to the design is provided for an initial term of 5 years, renewable for further terms of 5 years upon payment of renewal fees.

    Renewals & Maintenance:

    Maintenance fees have to be paid on the eve of each anniversary of filing. Member states may request for the fees due to them.

    Our attorneys will assist you with renewals and maintenance of Industrial Design in Kenya.

• BENEFITS OF INDUSTRIAL DESIGN REGISTRATION

  • RIGHTS OF THE DESIGN OWNER:

    • Designs confer on its holders or successors an exclusive right to work the Design.
    • Owner may authorise such uses of the patent through a contractual agreement with interested parties as to import, rent out, deliver or sell product resulting from Design registration.
    • Owner may authorise the working of the Design either by a manufacturer or by an importer and also:
      – assign, lease or licence the patent.
      – entitled to take legal action against infringers.
      – entitled to retain moral right over the invention as ‘the author of the invention’.
    • Design can be pledged for which it has to be registered in the patent register to become effective.

    Marking of products resulting from Design registration have to be marked so as to imply knowledge of registration by the infringer and without marking, penalties as prescribed can not be imposed.

• Cost of Registration in KENYA – ARIPO