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About Design Protection
EU Design Case Law
Invalidity Division Decisions
OHIM Appeal Decisions
ECJ and CFI Decisions and Opinions
Community Design Regulation (CDR)
Design Directive 98 71
Implementation of the Design Directive
in the EU
Registered Designs Act 1949
Registered Designs Rules 2006
International Case Law
Designs of Parts, and Parts of Designs
Non Visible Component Parts
Unregistered Community Designs - first disclosure outside Europe
OHIM Prior Use Evidence
Joint Ownership in the EU
About Design Protection
Designs and Design Protection
When we speak of "design" in the context of industrial property, we mean the perceived form, or appearance, of a product. This may be the shape of the product itself (in two or three dimensions) or it may be the form of some decorative element on the surface of the product.
Industrial designs (the "industrially applied" forms of products made on a industrial scale) are an important sub-class of designs, and member states of the World Trade Organisation or the Paris Convention are obliged to provide protection for industrial designs. However, the form of the protection is not specified by TRIPS or the Paris Convention. Many countries protect some designs as copyright works (specifically, as "works of applied art" under the Berne Convention). However, most industrialised countries also provide a system for registration of industrial (and perhaps other types of) designs. Such systems originally developed in many cases to protect textile designs, and this remains an important use of the design registration system.
The requirements of design registration systems vary from country to country, but the key issues are functionality and ornamentation. Most designers are working to a brief, which places some restrictions on the design freedom (i.e. the range of designs which they could supply to meet the brief). In the case of a surface pattern, such as a textile fabric or a wallpaper pattern, the designer may be constrained by the maximum size of the area available, or by the range of colours available. In the case of the shape of a product, the design may be constrained by ergonomic factors (e.g. the requirements to be able to handle or see the product) or by technical considerations (e.g. the requirement that the product should fit into a certain space in order to perform its function). These constraints may completely fix the design (for example, where the shape of one gear wheel is completely determined by that of those with which it has to inter-engage). In this case, the designer cannot make a creative contribution to the design (although considerable work may be required to produce engineering drawings or a computer model). Thus, in most registration systems, where the technical function of a product completely dictates the design, then that design cannot be protected.
Some design registration systems apply an additional criterion for registration, namely that the design should be "ornamental", or have "eye appeal", or some aesthetic character, or that it should create an artistic impression. Thus, for a design to be registerable under all design registration systems worldwide, it needs to satisfy a negative test (the form should not be fixed by its function) and a positive test (the form should be attractive, or appealing, or aesthetic). However, some registration systems may protection designs which do not meet one or both of these criteria.
TRIPS requires that designs should be protected if they are independently created, and are new or original. "Independent creation" implies that the design is not merely copied from another person, which constitutes the precondition for protection by copyright. As most design registration systems give monopoly protection, like that given by a patent, the design should be new, to prevent use of the registration system to monopolise designs which are already in the hands of the public. Many design registration systems compare a design with only those designs known in the country concerned (i.e. "local" novelty). However, designs now cross borders far more easily than in the past, due to the globalisation of trade, the development of Internet access worldwide, and the ease of air travel. Thus, more recent design registration systems compare a design with prior art from all over the world (i.e. "global" novelty). Some countries may exclude very old designs (for example, designs more than 50 or 100 years old). In some registration systems, all designs applied to any product are prior art, whereas in others, only those designs in the same class or product sector can be cited. Many systems provide a "grace period" prior to filing. Disclosures by the designer or his successor in title, or in breach of their rights cannot be cited against a later registration if they fell within the grace period. Generally, a design needs to differ in more than minor details from the prior art. A requirement of this sort is a practical necessity for a registration system, since immaterial details of a design are often omitted in the pictures used for registration.
Almost all designs can be classified as either flat surface designs or three dimensional "shape" designs, and in many countries these are referred to respectively as "pattern and ornament", or "shape and configuration" designs. Rather different considerations affect the two types of designs, since surface designs can generally be applied to a wide range of products, whereas many shape designs are only applicable to a single product (and, perhaps, to toys or novelty items made in the shape of that product). Most design registration systems require the applicant to specify the product to which the design is to be applied, which is sensible for shape designs but limiting for surface designs. Accordingly, designers rely primarily upon copyright for the protection of the surface designs in many countries.
Procedure for Registration
Applications for registration of a design may be filed at a national office of the country concerned, or at a regional office for a group of countries (such as the Office for Harmonisation in the International Market (Trade Marks and Designs) for the European Union, or the Benelux office for Belgium, the Netherlands and Luxembourg). They may also be filed at the International Bureau, as discussed below.
A valid application usually has to contain:
1. A request for registration as a design (as opposed to, for example, a trademark or a utility model);
2. Information identifying the applicant (the name of the applicant and sufficient postal information to enable normal delivery to him);
3. An identification of the design. This is normally in the form of representations (drawings or photographs) of the design, but might also be in the form of a specimen where permitted;
4. An indication of the kind of product to which the design is to be applied, in some cases accompanied by the class or classes (for example, of the Locarno International classification system) in which the product falls; and
5. The appropriate official fee.
Most designs reflect the character of the individual designer, and it is therefore perhaps surprising that many countries do not require the identification of the designer. However, it is permitted by some, and required by a few.
Where an agent is employed, it is also necessary to identify the agent, and possibly to file an Authorisation, or Power of Attorney, empowering the agent to act.
Finally, where priority is claimed, it will be necessary to identify the priority application by date, state and number and, in many cases, to submit a certified copy of the priority document. The Paris Convention permits a priority claim from an earlier design or utility model, and many design registration systems do the same. The term for claiming priority is generally six months from the first filing of the design.
The protection of designs by registration is usually based on the representations of the design. However, in some systems, it is possible (or even mandatory) to file a statement explaining some of the key design features. The statement may merely explain features of the representations, or it may act as a definition of the protection given in the manner of a patent claim. Finally (where this is permitted) it may indicate that the protection sought is based on only part of the design of the product shown in the representations (i.e. a "partial" design), or that no protection is sought for other parts (i.e. a "disclaimer").
Almost all countries make designs available to the public after registration, for example by laying the file open for inspection. Some publish the design in an official gazette, and an increasing number are making designs available on the Internet. In some registration systems, it is possible to keep a design secret for a limited period of time (for example, 2-3 years). This is sometimes desirable for textile designers, for instance, who may wish to protect a new fabric but keep it secret until the official launch date.
Examination of Applications
Particularly where a design is to be published, it will be necessary to check for compliance with formal requirements (relating, for example, to the payment of fees or to the size and nature of the reproductions). Where a specimen is initially filed, it will be necessary to replace it with representations for publication. Beyond this, some registration systems require a novelty search, and may also examine designs for other requirements, such as morality, legality, or artistic character. Since only a relatively small proportion of product designs are registered around the world, searches (confined as they usually are to earlier design registrations) cannot provide much guarantee of validity, but merely serve as a coarse filter to prevent re-registration of well known designs.
Where objections are raised, an applicant will be presented with the opportunity to reply with arguments. Amendments will only rarely be useful, since it is difficulty to amend a design without changing its appearance, and hence effectively producing a new design. However, it may occasionally be possible to "disclaim" matter which wrongly appears in a design application.
Duration of Protection
Registered design protection lasts for a limited period of time. In some countries the protection lasts around 15 years, whereas in others, the protection may last as long as 25 years (which corresponds to the term of protection granted to designs as "works of applied art" under the Berne Convention). Renewal fees will be payable to keep the design alive, typically every 5 years.
Rights given by Registration
Registration of a design protects form, but not function (which is the purpose of patent and utility model protection). In most countries, design registration gives a monopoly protection similar to that given by patents, and unlike that given by copyright. Thus, a registered design is infringed whether or not the infringer copied the design. Litigation involving registered designs is therefore simpler that litigation involving copyright, because it will not be necessary to prove the existence of the right, ownership of the right, or copying.
The extent to which the infringement must resemble the registered design varies from one country to another. Those countries which set a low threshold to registration (so that designs which are very similar to the prior art can be registered) may set a correspondingly narrow scope for infringement (so that only very similar designs infringe).
The acts which would infringe a registered design also vary from one country to another, but typically include at least making products to the design and selling those products. Very often, other acts such as importing such products, offering such products, or even using such products, may also be an infringement. In most design registration systems, the design is protected only when applied to the product which was specified in the application for registration. In other systems, however, at least for surface decoration designs the protection extends to any product to which the design is applied.
The Hague Agreement
Several supra-national protection systems for design registration exist. The first is the international design registration system provided by the Hague Agreement, and administered by WIPO. A limited number of (mostly European) counties are members of the Hague Agreement, and only nationals or residents of those countries can make use of it. The Hague agreement consists of three different treaties, the 1934 text, the 1960 text, and the Geneva Act. Each has different rules, fees and procedures. As different groups of States have acceded to the different texts, it is necessary for the applicant to carefully check which version of the Hague agreement, he is entitled to use. By filing a single international deposit with WIPO, an applicant can obtain a design registration which covers a number of designated states. Several designs can be included in a single application (a "multiple application"), on payment of incremental fees for each design over the first. No prior art examination is performed. The scope, validity and effect of the designs is left to the national law in each designated state.
The European Union has a Community Design Registration system. Any person can use the system regardless of nationality. It provides central registration of Community Designs, with effect for all European Union countries, together with a harmonised law on infringement and validity. Protection is granted to the design itself, rather than being limited to its application to a particular product. Priority may be claimed from designs, utility models, or International Exhibitions. The registration procedure does not involve any prior art search or examination, and (like the international system) permits multiple applications, and deferred publication where required. The lifetime of designs thus registered is 25 years, with renewal fees payable every fifth year. Community Designs can be obtained via the Hague system.
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