We are an SME from Italy and we will soon launch a collection of jewellery to be commercialised in several EU countries and outside Europe. The jewellery collection is created by invited artists and their designs are unique. How can we protect the appearance of our jewellery items under intellectual property?
In most European countries, and more particularly in the European Union, the outward appearance of product that results from its lines, contours, shape, texture, materials, ornamentation, can be subject of two different types of intellectual property rights protection: copyright and design rights.
At European level the requirements for copyright protection of designs have not been harmonised and therefore can vary depending on the jurisdiction. Therefore the extent to which, and the conditions under which, copyright protection of designs is conferred is determined under the national legislation of each Member State.
Copyright usually protects artistic works, as long as they meet the criteria of creativity and originality. As a general rule, in order to be protected under copyright law a design must be the result of a personal intellectual creation and contain the imprint of its author’s personality. The level of originality required is determined under the applicable national law.
Moreover, copyright arises automatically from the moment of the work’s creation and no registration or other formality is required. Therefore, if the design of your jewellery items can be considered to be an original artistic work under the applicable national law on copyright protection of designs, it is likely that they will be protected by copyright.
Besides copyright, your jewellery items or some parts of them might benefit from design rights protection. The national member states' laws on the protection of industrial design in the European Union were harmonised in a substantial part by the provisions of Directive 98/71/UE. As outlined above, at the EU level the appearance of the whole or a part of a product resulting from the features can benefit from design rights protection. In general, to be protected a design has to be new and original - presenting individual character and non-functional.
The definitions of novelty and individual character vary in the different jurisdictions. However, a design will be considered new if no identical design has been made available to the public before the date of filing of the application for registration or the date of priority if claimed. This means that the new design needs to vary in more than just “immaterial details” from other existing designs.
In order for a design to be regarded as having individual character, the overall impression which that design produces to the informed user must be different from that produced by earlier designs taken individually. The “informed user” is a fiction (imaginary user) and refers to a person with knowledge of designs in the applicable field of activity.
Please note that in some countries cumulative protection both by Copyright and Design Laws can be obtained (France, Benelux). France and Benelux Countries apply the principle of “unite de l’art,” which refers to the fact that entitlement to copyright protection for applied and other art works shall be determined under the same criteria.
Design rights protection grants its holder the exclusive right to use its design - making, offering, putting on the market, importing, exporting or using the product in which the design is incorporated or to which it is applied - and to prevent any third party not having his consent from using it. Such exclusivity is confined to acts of a commercial nature for the territory of protection (design rights have territorial character and the protection applies within the relevant territory).
In principle design rights are acquired through registration by the relevant intellectual property office. There are different ways to acquire design protection: through national registration, Community design registration or using the international system for registration of Industrial Designs (The Hague system).
Starting with a national application(s) in one country (e.g. Italy) or a few countries can be a good strategy if a product (e.g. jewellery items) in which the design is incorporated or to which it is applied is not manufactured nor commercialised yet, and no export strategy is set up – just bear in mind that a national registration will not protect the design abroad.
If you plan to market your jewellery products abroad but in a reduced number of countries, several national registrations could again prove to be the best solution.
However, other options must also be considered. If you want to protect designs in the EU countries, an application for a registered Community design, through the Office for Harmonization in the Internal Market OHIM, is often the best choice, since formalities are greatly reduced - single application, single language of filing, single handling of the request and of the right, and costs can be significantly lower. Once registered the Community design is valid in all 28 EU member states and the registration is renewable every 5 years, up to a maximum of 25 years.
In any case, should you want to start with a national application, extending its geographical scope of protection later is also possible. In the EU, there is a period of 12 months from the date of filing of the application at the national office in which to extend protection to a Community design. Within the 12 month grace period (preceding the date of filing of the application), disclosures of a design are not prejudicial in assessing its novelty and individual character.
However, no prior national registration is required to obtain Community design protection, so you can proceed directly to this stage if your plans include operating at the EU level from the beginning. Another advantage is that there is no limit to the number of designs which you can include in an application. As long as they belong to the same type of goods you are able to include the designs for all your jewellery items in the same application (although the fee will increase with the number of designs). Furthermore, in order to avoid disclosure to competitors, there is a possibility to keep the Community design application unpublished for up to 30 months (against the payment of an extra fee).
The rules applicable to the different registration procedures can be found on the corresponding national IP offices’ websites or at OHIM’s website in respect to Community design.
Furthermore, please also note a possible protection by way of an Unregistered Community Design. Throughout the European Union a new design with an individual character is automatically protected as an unregistered Community design. Compared to registered Community designs, this type of protection is less extensive and shorter-term (3 years). An unregistered design will be protected only against deliberate copying for a period of three years, from the moment when design was made available to the public in a way that the interested circles within the European Union could be aware of its appearance. However, unregistered designs are commonly used in sectors like the fashion industry, where avoiding registration formalities is important since those designs tend to have a very short market life and 3 years of protection are enough.
Finally, if you want to benefit from design protection in countries outside of the EU, generally you will have to apply for protection separately in each country, subject to local proceedings. At the international level design protection is also available through the international registration of designs, if the person is entitled to file an application under the Hague Agreement on the International Registration of Designs. Under the Hague Agreement, a single international application replaces a whole series of applications which otherwise would have to be effected with different national (or regional) offices. This system offers the possibility of obtaining protection for industrial designs in a number of states and/or intergovernmental organizations (OAPI, EU) - "Contracting Parties" - through a single international application filed with theWorld Intellectual Property Organization WIPO. However, the Hague system cannot be used to protect an industrial design in a country which is not party to the Hague Agreement, or which is not a member state of an intergovernmental organization party to the Hague Agreement. You could find the list of the Hague Agreement members on the following link:
Whatever system(s) you choose, it is always best practice to perform a design search assessing the availability of the design which you want to register and or use, and to make sure that you will not infringe third parties rights. For example Designview is a search tool through which you can consult registered Community designs, national registrations in EU countries and Hague system registrations designating the EU - https://www.tmdn.org/tmdsview-web.
For unregistered designs there is obviously no database, so you should conduct searches on the Internet and within the circles in the applicable sector.
As you can see, deciding on the most suitable way of protection will very much depend on your commercial and territory market strategy. Taken into consideration that a design contributes significantly to the market value of a product, a good intellectual property protection strategy can create important competitive advantages for your company.