The Industrial Designs Act, 2003 (Act 660) is a Ghanaian act to revise the enactments on the protection of industrial designs and to provide for related matters. The act is one of the seven acts that exist to protect Intellectual Property Rights in Ghana namely; Protection against Unfair Competition Act, 2000 (Act 589); Industrial Designs Act, 2003 (Act 660); Geographical Indications Act, 2003 (Act 659); Patent Act, 2003 (Act 657); Trademarks Act, 2004 (Act 664); Layout-Designs (Topographies) of Integrated Circuits Act, 2004 (Act 667) and Copyright Act, 2005 (Act 690).
Purpose Before the coming into force of the Act, the following are reasons the Parliament of Ghana considered to be the purpose of which the Bill should become an Act to cater for industrial designs.Industrial Designs Bill (Memorandum) dated 24 March 2003
The purpose of the Bill is to enhance the operation of the laws on the protection of industrial designs. This is being effected by expanding the law on the industrial designs to include the accepted international provisions under the TRIPS Agreement. In the course of this, the existing legislation on textile designs have also been revised and incorporated into this Bill.TRIPS Agreement
The definition of an industrial design includes everything which in the appearance of a product, causes an aesthetic impression, in other words, anything which gives an impression received by the sense of sight can be an industrial design. This definition excludes from protection elements in a design which are only for obtaining a technical result and hence cannot be claimed to be as a result of personal creativity. Such elements may be within the domains of Patent Law and outside the protection conferred under Industrial Design Law.
Also, under this Bill, an industrial design is registrable if it is new, it has not been disclosed to the public anywhere in the world and it is not contrary to public order or morality.
Another purpose is to cater for the situation in which two or more persons have created the same industrial design independently of each other, clause 3 applies the first-to-file system to determine who has the right to the registration of an industrial design.
The Industrial Designs ActThe Industrial Designs Act, 2003 (Act 660) was enacted by the Parliament of Ghana and came into force on 31 December 2003 after receiving Presidential assent and fully named, INDUSTRIAL DESIGNS ACT, 2003 (ACT 660) to cater for issues surrounding Industrial Designs in Ghana. The Act was expressed as an act to revise the enactments on the protection of industrial designs and to provide for related matters. Before the birth of the Act, there was the United Kingdom Designs (protection) ordinance (Cap 182) and also the Textiles Designs (Registration) Decree, 1973 (N.R.C.D. 213),Act 660 at section 27. the decree provided for the registration and protection of textile design and is presently the law regulating the registration and protection of textile designs in Ghana.
Structure The Act comprises 27 sections and is categorized into the following headings: Headings Sections Summaries of the Sections Definition 1 Industrial Design is; Lines or colors or textile design which gives special appearance to an industry product. Textile Design – a product of industry or handicraft and can serve as a pattern for a product of industry or handicraft Registrable Industrial Design 2 It is registrable if it is; New Differ from other designs. Discusses what does not amount to disclosure. Right to Registration 3 Right to register lies with; The creator of the design Joint creators of a Design Employer Priority date – first to file has the right to register Assignments, Transfers and Succession Naming of the creator 4 Creator of the design shall be named unless otherwise stated by the creator. Application for registration 5 Talks about steps to apply for registration Persons or States may apply Payment of prescribed fees Request of autograph of design and instruction on use of design Application must be sent to the Registrar Application may be withdrawn Examination 6 Registrar must Record filing Examine whether it is complies with the Act Opposition to registration 7 Any person may give notice of defect in registration requirements within prescribed period to Registrar. Registrar shall Furnish a copy of notice to Applicant Furnish the counter statement to Opposition if there any Hear either or both sides of the matter and conclude whether the Design is registrable or not Registration and publication 8 In the absence of any notice and fulfillment of registration requirements the Registrar may issue a certificate of registration and publish a reference to the registration. Application shall be refused if Registrar is satisfied that it is not registrable Rights of Registration 9 Exploitation of design.(Making Profit) Action against anyone who infringes this right Duration and Renewal of registration 10 Registration is valid for 5 years Renewable twice for a period of 5 years each upon payment of prescribed fee Surrender of registration 11 Creator may surrender By written declaration to the registrar Effective from the date on which it was recorded Cancellation of registration 12 An interested person may submit to the Court to cancel a registration if The requirement under sections 1 & 2 has not being fulfilled The registered owner is not the creator or successor in title Cancelled registration is void from the date of registration and Registrar shall record or publish it Change in Ownership 13 Changes in ownership of an industrial design shall be submitted to the registrar in writing. Approval of changes must be published by the registrar Changes affects no third parties until it has been recorded and published License Contracts 14 License contracts covering registered designs or applications for design must be submitted to the registrar who is to keep the contents confidential but must record and publish a reference to it Such contracts are not binding on third parties unless recorded and published Registrar 15 Duties relating to the procedure of registration of industrial designs and administration of registered industrial designs Register 16 Contains all recorded matters in relation to this Act Persons can consult or have access to it Correction of Errors 17 Filed Applications or Documents with errors may be rectified by the Registrar Extension of Time 18 Registrar may extend the time for doing any act under this Act if he is satisfied that the circumstances justify it upon receiving a written notice Exercise of Discretionary Powers 19 Registrar, in exercising Discretionary Powers conferred on it must be in conformity with Article 296 of the Constitution Representation 20 If the Applicant if a natural or legal person outside the country, he/it shall be represented by a legal practitioner resident and practicing inside the country Appeals 21 An interested person not satisfied with the decision of the Registrar may appeal to the Court Infringement and Offences 22 Any person who performs the right under section 9 other than the registered owner without consent, constitutes an infringement. Upon application by the registered owner or licensee, the Court may Grant an injunction Award damages Grant any other remedy The person who knowingly infringes commits an offence and is liable to A summary conviction to a fine not more than 2000 penalty units or Imprisonment not exceeding 2 years or Both Application of International Treaties 23 Where the Applicant is a country, when there is conflict of laws between this Act and an International Treaty, the International Treaty shall prevail Harare Protocol 24 A protocol Ghana has incorporated into its legislation Regulations 25 Regulations are to be made by LIs by the Minister for the effective implementation of this Act Interpretations 26 Please refer below (key terms) Repeals and Savings 27 Repealed laws Until revoked, subsidiary laws under the Repealed laws will still be in force
Objectives The industrial Designs Act has its main objective stated in the preamble of the Act. It seems to revise the enactments on Industrial Designs and to provide for related matters. Sections 1 (a) (b) & 2 define what an Industrial Design is and what forms an Industrial Design may take.
The Act defines an Industrial Design as a composition of lines or colors, any three-dimensional form or any material, whether or not associated with lines or colors. A textile design is also considered as industrial designs where the composition, form or material gives a special appearance to a product of industry or handicraft and can serve as a pattern for a product of industry or handicraft.Act 660 at Section 1.
In essence, it limits the scope of applicability to designs that impact the aesthetic character of the industrial product. Though the Industrial Design Act is not express on the fact that, protection of Industrial Design in Ghana is contingent upon registration that can be inferred from the Act, however a greater part of the sections of the Act deals with the issue of Registration of Industrial Designs by creators. Industrial Designs are nonetheless registered if they are original or significantly different from known designs.
Section (2) provides for designs which do not fall under the requirement of Industrial Acts in Ghana. The protection under Act 660 is not applicable to anything in an industrial design which serves solely to obtain a technical result to the extent that it leaves no freedom as regards arbitrary features of appearance.
Key terms Key terms in the Act are defined in the Interpretation Section of the Act.
Section 26 provides unless the context otherwise requires the following definitions to the known terms;
Court means the High Court;
Creator means the person who creates the industrial design; "Harare Protocol" means the Protocol on Patents and Industrial Designs adopted in 1982 in Harare, Zimbabwe and ratified by the Government of Ghana on 20 September 1983;
International Classification means the classification according to the Locarno Treaties of 8 October 1968 establishing an International Classification for Industrial Designs;
Minister means the Minister responsible for Justice;
Paris Convention means the Paris Convention for the Protection of Industrial Property of 20 March 1883, as revised;
Priority Date means the date of the earlier application that serves as the basis for the right of priority provided for in the Paris Convention;
Register means the Register of Industrial Designs;
Registered owner means the registered owner of an industrial design;
Registrar means the Registrar‐General.
Application The Act is applicable where, An industrial design does not solely serve to obtain a technical result to the extent that it leaves no freedom as regards arbitrary features of appearance.Locarno Treaties at Section 1(2). Any international treaty in respect of industrial property to which the country is a party in matters dealt with by this Act.Locarno Treaties at Section 23. The industrial design is made within the country. The protection provided under the Act is limited to the country because the Industrial Design rights are territorial in nature. A composition of lines or colours, any three dimensions form or any material whether or not associated with lines of colours falls within the context of textile design.Act 660 at Section 1(a).
Emerging law to protect industrial designs The Industrial Design Act fundamentally seeks to protect the unique creations of persons that falls within the ambit of Section 1 of Act 660. Also, it seeks to grant to the creator of designs to reward them for their effort and investment in manufacturing the product and does not protect any technical features of the object to which it is applied.