THE PARTIAL-DESIGN SYSTEM

1999/01/01

Up to now, even where only one portion of an article was externally distinctive its design could only be registered as the shape of the entire article. Hereafter, however, applicants will be able to register designs for just the shape of a portion of an article, or a combination of the shape and pattern of the portion. For example, even where only the lens portion of a camera was distinctive the shape of the entire camera had to be registered. By contrast, under the revised system it will be possible to register only the shape of that lens portion. Other possible examples of items for which it will be possible to obtain design registration include the handle portion of a pair of scissors, the knob portion of a door handle, the design portion of a T-shirt or a decorative band portion on a cup. By narrowing the registration to just the distinctive portion of the article, it will be possible for the design registration holder to prevent others from using the same or similar design even if the rest of the article in which that portion is used differs from the remaining non-registered portions of the article. In short, a partial-design registration allows applicants to obtain broader and stronger rights than would be the case with whole-design registration.

Practice Tip:

Partial Designs Eligible for Registration

A design on an article of clothing or a pattern on tableware can be registered as partial designs if they are filed together with an applocation for the shape of the entire article on which they appear.

Practice Tip:

Applicants filing both a whole-design application and a partial-design application will find that the partial-design application will be rejected if the whole design is registered first, so the order of filing is important. Either the partial-design application will have to be filed first or the partial-design application and the whole-design application will have to be filed on the same day.

Infringement:

Once a partial-design application has been registered, the registrant can seek an injunction and/or money damages for infringement for designs having a portion that is the same as or similar to the registered portion, even if the rest of the suspect design differs from the remaining non-registered portions of the registered design.

Enforcing Partial-Design Rights