What is a Design Objection?

A design objection occurs when the intellectual property office (such as the Patent and Trademark Office or the Office of Designs) finds that your design does not meet the requirements for registration. This could be due to various reasons, such as lack of originality, similarity to an existing design, or issues related to disclosure.

When a design is objected, the applicant will receive an official notice from the relevant office, outlining the specific reasons for the objection. The applicant then has the opportunity to respond to the objection, clarify any issues, or amend the design to make it eligible for registration.

Common Reasons for Design Objections

1. Lack of Novelty or Originality

The most common reason for a design objection is the lack of novelty or originality. If your design is similar or identical to a design that is already in the public domain, it will not qualify for protection. The intellectual property office typically conducts a prior art search to determine if your design is unique or if there are existing designs that conflict with yours.

How to Overcome:

• Ensure your design is completely original and not inspired by existing designs in the public domain.
• Provide evidence or documentation proving the novelty of your design if needed.

2. Lack of Industrial Applicability

For a design to be registered, it must have an industrial application. This means it should be capable of being reproduced or used in an industrial process (such as manufacturing). If your design is purely ornamental or has no functional purpose, it might face objections.

How to Overcome:

• Demonstrate how your design can be used or reproduced in an industrial setting.
• Provide examples of the design being used in products that serve a practical purpose.

3. Similarity to Existing Designs

If your design closely resembles an existing registered design or is identical to another design, it may face objections based on lack of originality or distinctiveness. This includes both patented designs and those that are already in the public domain.

How to Overcome:

• Conduct a thorough search before filing your application to ensure there are no similar registered designs.
• If an objection arises, you may need to modify your design to make it distinctive and non-infringing.

4. Non-Compliance with Formal Requirements

Sometimes, design objections occur due to procedural or formal mistakes. This may include errors in the application form, incorrect or unclear representations of the design, or missing documentation.

How to Overcome:

• Carefully check your design application to ensure all required documents are submitted.
• Ensure that the drawings or photographs of the design are clear, accurate, and meet the required specifications.

5. Offensive or Contrary to Public Order

Designs that are deemed offensive, immoral, or contrary to public order may also face objections. This includes designs that incorporate offensive imagery, symbols, or ideas that go against public norms.

How to Overcome:

• Review your design to ensure it aligns with ethical standards and does not violate public order or morals.

How to Respond to a Design Objection

If your design application receives an objection, you must respond within the time frame provided by the intellectual property office. Here are the steps to take:

Step 1: Review the Objection Notice

Carefully read the objection notice issued by the intellectual property office. This notice will outline the specific reason for the objection and may include references to legal provisions or case laws. Understanding the nature of the objection is essential before proceeding with a response.

Step 2: Gather Supporting Evidence

Depending on the nature of the objection, you may need to provide additional documentation, evidence, or clarification. For example:

• If the objection is based on lack of originality, you may need to provide design history, proof of development, or a novelty search report.
• If the objection is due to similarity to an existing design, you may need to provide a detailed comparison or a modification of the design.

Step 3: Address the Issue

After reviewing the objection and gathering the necessary evidence, you can either:

• Amend your design to meet the requirements and address the objection.
• Provide a justification or argument to demonstrate that your design complies with the legal criteria for registration.

Step 4: File a Response

Once you have addressed the objections, file your response with the intellectual property office. Ensure your response is well-documented and clearly explains how the objection has been resolved. You may also need to submit updated drawings or design descriptions if required.

Step 5: Await a Decision

After submitting your response, the intellectual property office will review it and decide whether the objection is upheld or dismissed. If the office is satisfied with the changes or justifications provided, your design will proceed to registration.

What Happens If Your Design is Still Objected?

In cases where the objection is not resolved through amendments or arguments, your application may face rejection. However, depending on the jurisdiction, there may be an opportunity to appeal the decision or seek further clarification.

If the design registration is rejected, you may choose to:

• Modify the design and reapply.
• Appeal the decision within the timeframe allowed by the intellectual property office.
• Consult a legal professional specializing in intellectual property to explore alternative options or solutions.