Protecting a design in the EU: A practical guide
Design rights play an important role in the protection of industrial designs and models. Maxime Schoots outlines key considerations when protecting a design in the European Union (EU), as well as the main benefits and requirements for protection.
Design law protect the appearance of a product (or part thereof), including two-dimensional drawings and three-dimensional designs. Rights can be filed using the national, European and international systems. In this article, we will focus predominantly on protecting a design in the EU.
Protecting a design in the EU
To be eligible for registration within the EU, a design must possess:
- Novelty: No identical design should have been made available to the public before the filing or priority date. Designs are deemed to be identical if their characteristics differ only in insignificant details.
- Individual character: In the mind of the ‘informed user’, the impression produced by the design must differ from the overall impression produced by a design made previously available to the public before the filing or priority date.
Applications for design registrations in the EU (Registered Community designs or RCDs) are subject to a one-year grace period. This means that the designer (or successor in title) has 12 months to test the design on the market before filing the application. If the application is filed after this period has expired, the design will no longer be considered to possess novelty or individual character.
Terms of design protection
As different industries use designs differently, the EU offers two forms of protection: unregistered and registered Community designs.
Unregistered Community designs (UCDs) cover a period of only three years and are particularly suitable for industries that have short lifespans for their products, such as fashion. The rights come into being automatically for eligible designs, meaning creators do not have to fulfil any formalities to benefit from protection. However, UCDs must still meet the same requirements as registered designs to be eligible for protection (namely novelty and individual character). In addition, UCDs can only be enforced against direct copies.
Registered Community designs (RCDs) cover a longer period of up to 25 years and offer greater legal certainty for commercial products with a longer lifespan. The rights afford more extensive protection than an UCD in terms of both duration and scope. They confer on the holder the exclusive right to use the design and to prevent third parties from using it without consent irrespective of whether the infringer acted intentionally.
This can include a product with the same appearance as the design or a product that is so similar it does not create enough of a different overall impression from the registered design. Infringing use can come in various forms, including selling, renting, importing, exporting or exhibiting an infringing design.
Protecting a design in the EU via the international system
It is also possible to obtain design protection in the EU via the Hague Agreement Concerning the International Registration of Industrial Design (also known as the Hague System) by filing a single application to the World Intellectual Property Organization (WIPO).
As with the Madrid System for international trademarks, the Hague System offers a cost-effective and streamlined way to register industrial designs, enabling protection for up to100 designs in 96 countries via a single application. Applicants must be nationals, residents or undertake commercial activities in one of the Hague System’s 79 contracting parties to be eligible to apply.
For additional advice on protecting a design via the European, international or national systems, speak to your Novagraaf attorney or contact us below. To find out more about the EU design right system, including regulatory changes that are in the pipeline, read our article ‘EU design law: Updates pending…’
Maxime Schoots works in Novagraaf’s Knowledge Management team in Amsterdam.