16-01-2024

This is how you protect your intellectual property | Part 4 | Drawings and designs: design protection

This fourth article in the series 'This is how you protect your intellectual property' looks at drawing and design law.

Introduction
In addition to their brands and names, products are distinguished by their appearance. Think, for example, of Apple's AirPods versus Samsung's Galaxy Buds, or a Louise Vuitton bag versus a Chanel bag. Unique protected designs allow companies to distinguish themselves from their competition. Design and design law cover a wide range of designs, from complex sports car models to simple pen designs.

To obtain drawing or design protection, the relevant drawings and designs must be registered. This article discusses the requirements for the registration of designs, and the protection provided by a registered design.

Drawing and design rights
Design law aims at protecting designers of designs and drawings against the unauthorized use of their designs. For the Benelux, the Design right has been regulated in the Benelux Convention on Intellectual Property (BCIP) since 2006. The EU design is regulated in the Community Designs Regulation (CDR), which has been in force since 2002. The Paris Convention for the Protection of Industrial Property provides for the possibility of an international application through the International Office in Geneva (PCPIP), on the basis of which a national design right can be obtained in designated countries.

The appearance of a product or part thereof is regarded as a drawing or design. The appearance of a product includes the set of characteristics of that product’s lines, colors, shape, outline, texture, material or ornamentation.

Product means any article of industrial or hand-crafted manufacture, including parts intended to be assembled into a complex product, the product’s packaging or execution, graphic symbols and typographic typefaces. Computer programs are not considered a product.

The term drawings is used for two-dimensional models, such as patterns on textiles, tiles or wallpaper. Three-dimensional designs are referred to as models. This can include watches, garments, coffee makers, bags, lamps, sofas, and so on.

Requirements of design law
In order to register a design right as a Benelux or EU design, the design must meet a number of requirements that relate solely to appearance. The design must be new, have an individual character and not be determined by technology. Excluded from protection are the external features of a product that are solely dictated by its technical function, or external features necessary to connect the product to or place it in, around or against another product for the product to perform its intended function. This so-called technical effect falls within the scope of patent law.

New
Designers may register a drawing or design only if it is new. A drawing or design is new if no identical drawing or model has previously been made available to the public. Designs are also considered identical if their features differ in insignificant details only. An example is a table or chair with a design identical to a model already available to the public, differing in size only.

Own character
A drawing or design must have an individual character. An individual character means that the general impression of the drawing or design on the informed user must differ from the general impression on that user of drawings or designs made available to the public. The term informed user means: a consumer with knowledge of the industry in which the design is sold.

In assessing the individual character of a design, the degree of freedom of the designer is taken into account. The nature of the product to which the design refers may entail that the designer of one product has less design freedom than the designer of another product, as otherwise the usefulness of the product becomes too limited. Consider, for example, a shoe design, versus a design of a wallpaper motif. The more limited the designer's freedom, the more conformity with other designs is allowed.

Available to the public
A drawing or design can be made available to the public by means of publication, exhibition, trade, or, for example, public use of the product to which the drawing is applied or into which the design is incorporated. The provision of a drawing or design to third parties under a duty of confidentiality does not count as disclosure.

A grace period applies to the registration of designs. If a design has not been registered but has already been made available to the public, it is still possible to register the drawing or design, as long as registration takes place within 12 months after it has been made available to the public.

Obtaining a design right
Within the Benelux, a design right can be obtained from the 'Benelux Office for Intellectual Property' (BBIE). Protection throughout the European Union can be obtained through registration with the 'European Union Intellectual Property Office' (EUIPO). Through registration with the International Bureau of WIPO, design protection can be obtained in states that are not members of the BIPO. Protection in those countries is governed by national law.

When a design is registered with the BOIPO, EUIPO and the WIPO, only a cursory check is made as to whether the designs meet the aforementioned requirements. It is possible that there are designs in the register that, viewed purely in terms of quality, do not meet all the requirements. Therefore, every design filed can be challenged as null and void.

The period of validity of a design right is five years from the day the design is entered into the register. After that period, the term may be extended four times maximum by a period of five years up to 25 years in total.

Rights of the design holder
The holder of the design right, also called the design holder, has the exclusive right to use his design. That use includes manufacturing, offering, selling, delivering, marketing, renting, exporting, importing, exhibiting or stocking for any of these purposes. A third party who, without the design holder's consent, performs any of these acts commits design infringement.

The design holder is free to bring various actions against the infringer. By way of compensation, the court may order at the holder's request, the surrender to the holder of the goods that infringe a drawing or design right, as well as, where appropriate, the materials and implements used primarily in the production of those goods. In addition to or in lieu of an action for damages, the holder may bring an action for the remittance of profits, as well as an overview/statement of the profits.

In addition, the holder of a design right may also claim that the goods infringing the design right and the materials and implements primarily used in the production of those goods, be recalled or destroyed.

Extinction of design right
A design right is extinguished by a lapse of that right or by declaration of invalidity. The exclusive right to a drawing or design expires by voluntary cancellation or by expiration of the registration.

The invalidity of a registration of a drawing or design can be invoked by any interested party, if the drawing or design is not a drawing or design within the meaning of the EU Design Regulation or the BTIP, the drawing or design does not comply with the conditions set out in the regulation or the convention, or if there is a technical exception that prevents protection of the design.

Because of the registration system chosen for design rights, there is no deadline for invoking invalidity. Therefore, registration does not guarantee an (inviolable) design right.

Unregistered Community Designs
Lastly, there is the unregistered design right. As the name suggests, these designs are not registered. This design right arises automatically from the date the design is made available to the public within the EU and remains valid for a period of three years. The unregistered Community Design gives you the right to prohibit third parties from using the design without your permission, but only in case of a counterfeit.

It can be difficult to prove who made an unregistered creation available to the public first. The recording of an idea in the i-DEPOT can help prove on what date an idea existed and by whom it was conceived. An idea by itself cannot be protected, unless it has been worked out into a concrete product, process or service. This can be done by registering a design, patent or trademark right.

Questions?
If you have any questions after reading of this article, please do not hesitate to contact us.

About the article series: This is how you protect your intellectual property
For virtually every company, intellectual property such as inventions, trademarks, designs and copyrights represent significant value. To protect that value, it is important that you properly protect the intellectual property developed by your company both nationally and internationally to prevent misuse.

The article series, 'This is How You Protect Your Intellectual Property', aims at giving insight into key intellectual property rights, how to protect and enforce these rights nationally and internationally. Every month a new installment in the series will appear on this website as shown below.

The nine-part series covers the following topics: