A design is the outward appearance of a product or part thereof resulting, in particular, from the characteristics of the lines, contours, colours, shape, surface, structure and/or materials of the product itself and/or its ornamentation.
Besides the protection for registered Community design, the Council Regulation (EC) nº 6/2002 of 12 December 2001 on Community Designs provides a short-term form of protection for unregistered industrial designs. Registration is not required. Protection lasts for a period of three years and starts when a new design with an individual character is made available to the public in such a way that the interested circles within the European Union could be aware of its appearance. Unlike a registered design, it is not necessary to file an application to obtain protection. The unregistered design constitutes a right to prevent the commercial use of the design only if the use results from copying.
A well-designed product can be synonymous with the image of your undertaking, and thus becomes a valuable asset for you. If you do not protect your design, others may benefit from your intellectual property.
Nevertheless, depending on the national or regional law system, a design which has not be registered may still be protected in different ways:
- under industrial property law (as an unregistered design),
- as copyright (if exists as an original man-made work) or
- under unfair competition law.
The subject of the design protection is the outwardly visible appearance of the product or its part, packaging or the ornamentation itself.
A design is protected by an exclusive right if it is new and has individual character. A design is regarded as new if, on the date on which the application for registration has been filed, no identical design has been made available to the public.
A design is considered to have an individual character if the overall impression it produces on an informed user differs from the overall impression made by any design available to the public before the date of filing of the application for registration.
Further requirements for design protection may vary in different countries.
The design protection gives to its holder the exclusive right to use it and to prevent any third party from using it without the holder's consent. The aforementioned use shall cover, in particular; making, offering, putting on the market, importing, exporting or using a product in which the design is incorporated or to which it is applied, or stocking such a product for those purposes.
In most countries, registered design protection is renewable by periods of 5 years from the filing date, up to a maximum of 25 years.
There are different ways to acquire design protection, through application to national, Community design or Hague design offices.
In the EU, you may obtain a community design registration valid in all member countries through a single application, which can be filed directly in the European Union Intellectual Property Office (EUIPO) in Alicante (Spain) or through any of the EU national Industrial Property Offices. If the design is registered by national offices, the protection is limited to the country in which protection is granted. Some countries (e.g. the UK) provide the protection of unregistered design in their national legislation. Furthermore, all designs in the EU fulfilling specific criteria for protection are automatically protected (without registration) as unregistered Community designs.
The Hague System for the International Registration of Industrial Designs provides a mechanism for registering a design in several countries by means of a single application, filed in one language, with one set of fees. The system is administered by WIPO.
The features of appearance that result solely from the technical function of a product cannot be protected as a design. The components of a complex product are protected only if they are visible during the normal use of a product and if they are new and have individual character. Design features enabling one product to be functionally fitted or aesthetically matched to another are excluded from protection. These so-called 'must-fit' and 'must-match' exceptions are influenced by the need to ensure that third party providers of spare parts should not be unfairly prevented from competing within the spare parts market.
The existence of a grace period and the corresponding requirements can be provided by applicable national laws. The law can allow the filing of an application for registration of an industrial design after its disclosure, within a limited time period from the date of disclosure (generally six months or a year). This is particularly useful for small businesses since they frequently lack the funds to finance registration of designs, which may not be successful on the market.