OVERVIEW
The European Economic Community (EEC) began discussing the harmonization of design laws in 1959, but progress was slow. It took forty years for the Designs Directive to be adopted in 1998, which aimed to harmonize registered design law throughout the member states of the European Union (EU). The directive was based on the recognition that a harmonized design registration system was crucial for businesses, and its primary goal was to create a level playing field throughout the EU by harmonizing national substantive laws on registered designs. In 2001, the Council Regulation on Community designs created two new pan-EU design rights, which were not intended to replace national registration systems. These new rights, the Registered Community Designs (RCDs) and the three-year unregistered Community design right, catered to the needs of all industries.
The introduction of the Designs Directive and the Council Regulation on Community designs aimed to create a harmonized system of design law within the EU. While progress was slow, the recognition of the importance of a harmonized design registration system led to the adoption of the Designs Directive in 1998. This directive aimed to create a level playing field for businesses by harmonizing national substantive laws on registered designs. The Council Regulation on Community designs created two new pan-EU design rights in 2001, which were not intended to replace national registration systems. The introduction of these new rights aimed to cater to the needs of all industries and has been effective, with 450,000 registered designs in force in the EU and a growing body of jurisprudence from superior courts.
MEANING OF DESIGN
A ‘design’ means the appearance of the whole or a part of a resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation.
MEANING OF PRODUCT
A ‘product’ means any industrial or handicraft item, including, inter alia, parts intended to be assembled into a complex product.
INDUSTRIAL DESIGN PROTECTION BY INTERNATIONAL CONVENTIONS
The protection of industrial designs is governed by various international conventions, including the Paris Convention, the Berne Convention, and the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS). Under the Paris Convention, industrial designs must be protected in all member countries, but there is no obligation to pass special laws for their protection. The Berne Convention provides for copyright protection for works of applied art, with a term of protection of 25 years from creation. However, an exception to this protection can be made if a work would only be eligible for industrial design protection in its country of origin. TRIPS sets out minimum standards for the protection of independently created industrial designs, including requirements for novelty and originality, as well as significant difference from known designs. Textile designs are granted an exceptional status under TRIPS, with multiple applications, deferred publications, and informal protection left up to national legislatures. The minimum term of protection for industrial designs is set at 10 years, with limitations on industrial property protection allowed under the three-step test.
Relevant Articles and Acts:
I. Paris Convention
II. Berne Convention
III. Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS)
IV. Art 2(1) of the Berne Convention
V. Art 5(4) of the Berne Convention
VI. Art 7(4) of the Berne Convention
VII. Art 25 and 26 of TRIPS
VIII. TFEU
IX. The three-step test
NEED FOR DESIGN PROTECTION IN EUROPE
European design law comprises EU design legislation for registered and unregistered Community designs, as well as national design laws in the 28 EU Member States. Key requirements for design protection are novelty and individual character. Novelty requires the new design to differ from existing designs in more than just immaterial details, while individual character depends on whether the design creates the same overall impression on the informed user compared to earlier designs. The informed user is particularly observant and has knowledge of previous designs related to the product.
Registered Community designs are administered by the European Intellectual Property Office in Alicante, Spain. In contrast to trademark cases, the comparison in design law is made by placing the design to be examined and other designs side by side. The informed user is particularly observant and has awareness of the state of the prior art. This presentation will cover European and German design law.
DESIGN PROTECTION IN EUROPEAN LAW
The Design Directive of the EU, as well as the laws of Norway, Iceland, Liechtenstein, and Switzerland, contain similar provisions for the protection of designs. The definition of eligible designs is broad and requires novelty and individual character. The standard for novelty and individual character is absolute, with few exceptions. The acquisition of a design right provides protection against commercial exploitation, and infringement is determined based on the same standards as the requirements for protection. There is currently no harmonization regarding the protection of parts of complex products. The property right holder is granted a de facto monopoly on the secondary market for spare parts, which raises concerns about legal and competition policy. The Design Directive allows for national legislatures to retain their rules on spare parts, with amendments only permissible if they lead to a liberalization of the market for spare parts. Applications for industrial designs are filed at the national offices of the protecting countries, with varying rules for registration procedures. The enforcement of industrial design rights corresponds to the enforcement of other intellectual property rights. Licensing and assignment of design rights are governed by national law.
OVERLAP OF DESIGN LAW AND OTHER IP RIGHTS
A product design or an element of a product design may, at the same time, amount to both a design right and qualify for protection under other IP rights, particularly under copyright and trademark law. For example, a device mark may also be registered as a design (if new and individual), and the three-dimensional appearance of a product, which can be protected as a design, may also be registered as a trademark (provided it is distinctive). Likewise, logos, in principle, can be protected as designs and trademarks.
Designs may also be protected under copyright law. Whether they qualify depends on the applicable laws of the Member States of the European Union. Contrary to design and trademark law, no EU-wide copyright law exists and the requirements for copyright protection have not been harmonised. As a rule, for a design to constitute a "work" protected under copyright law, the design must be the result of a personal intellectual creation, containing the imprint of its author's personality. This, in principle, implies a higher standard of originality than the requirements of "individual character" for design protection.
Furthermore, when seeking patent protection for a specific product, it should always be considered whether this product shows features protectable under design law. This will regularly be the case unless, from an objective point of view, the features have been chosen solely on the basis of considerations of functionality, which will rarely be the case.
DESIGN PROTECTION THROUGH REGISTRATION
Rights in designs are acquired through registration and through use. Community designs are protected as registered Community designs after filing at OHIM and registration, without examination as to the most relevant substantive conditions of protection novelty, individual character. Protection through use for unregistered Community designs is acquired through the first publication or other use within the European Union of a design fulfilling the conditions of protection. First disclosure or use outside of the European Union does not create any rights in Europe. German design law provides for registration of designs. German law does not recognize unregistered designs. Of course, unregistered Community designs are also valid in Germany.
A registration gives the design proprietor the exclusive right to use the design in the course of trade. Protection extends to any later design creating a substantially identical impression on the informed user. Protection is available regardless of the category of product in which the design is incorporated. Registered designs are protected against both deliberate copying and the independent development of a similar design. Further advantages of a registered design compared to an unregistered design are a longer term of protection up to 25 instead of three years and a stronger position in case of infringement litigation.
As with a trademark, there are international and national registration procedures for designs:
National registration with the German Patent and Trademark Office in Munich
Registration as a Community design with the EUIPO in Alicante
International registration with the International Bureau of WIPO in Geneva
The Hague System of international registration of industrial designs is applicable among the countries party to the Hague Agreement. In 2018, 68 countries were members of the Hague Agreement some important countries are not members, such as China, but it is possible to designate the EU. An international registration produces the same effects in each of the designated countries as if the design had been registered there directly, unless protection is refused by the competent office of that country. To file an international application, no prior national basic registration in a Member State of the Hague Agreement is required contrary to international trademark registrations under the Madrid system.
The Community design gives the proprietor the exclusive right to prevent any third party from using an infringing design anywhere within the European Union. A single application grants protection for five years, and protection may be renewed for additional periods of five years up to a maximum of 25 years. Unregistered Community designs are protected for three years from the date of disclosure of the design to the public within the European Union. It is a preferred method of obtaining protection in Europe because it is easily accessible, relatively inexpensive, provides unitary protection throughout Europe and can be enforced Community-wide in specially designated Community design courts.
PROCEDURE FOR OBTAINING REGISTERED DESIGN RIGHTS
I. To register a Community or German design, an application form must be filed, which has to contain a representation of the design that is suited for publication and an indication of at least one product in which the design is intended to be incorporated or to which it is intended to be applied. The goods are classified in accordance with an international classification system established by the Locarno Agreement, also administered by WIPO. A multiplicity of designs can be included in one multiple application (German designs: up to 100; Community designs: no limit, up to 99 in case of online filing) provided that, in particular, they have a common main class of goods. Filing multiple designs in a single application helps saving fees. Since March 1, 2010 the German Patent and Trademark Office (GPTO) also offers online application, as does the EUIPO.
II. After filing the application form, the EUIPO or GPTO examines whether or not the application contains formal defects, whether or not the design applied for is eligible for design protection at all and whether the design complies with public policy and accepted principles of morality. If these requirements are fulfilled, the design will be registered and published in the electronic designs gazette. The first five-year term of protection starts from the date of this publication. If the design was filed in Germany and the publication of the registration was the first disclosure of the design concerned, it is automatically protected as an unregistered Community design for three years through the publication of the registration of the German design in the designs gazette of the GPTO.
III. Substantive requirements for protection like novelty and individual character are not examined by the GPTO or the EUIPO. These requirements are examined only in case of a legal dispute. Requests for declaration of invalidity of a registered Community design may be filed directly at the EUIPO or by way of a counterclaim in infringement proceedings. Challenges to registered German designs are not dealt with by the GPTO, but may be brought before a competent civil court directly or as a counterclaim to an action for infringement. To register an international design, applications must be filed at the International Bureau of WIPO. A single application may contain up to 100 separate designs. Applications may also be filed online. The application must designate the members of the Hague Agreement in which the design is desired to be protected. The registration fee depends on the number of selected countries. Application forms are available in English and French.
ENFORCING DESIGN RIGHTS IN EUROPE
While German design rights, as well as international design registration covering Germany, provide protection only in Germany, Community designs have "unitary character" and "equal effect throughout the Community"17 and therefore cover all Member States of the EU. Accordingly, it is established case law that a claim for cease-and-desist (injunctive relief) on the grounds of a Community design infringement applies, as a rule, to the entire territory of the EU, because an infringement committed anywhere in the European Union establishes, in principle, a risk of repeat infringement for the entire territory of the EU.
CONCLUSION
Design is increasingly recognised as key to bringing ideas to the market and transforming them into user-friendly and appealing products or services. A EUIPO and European Patent Office study on IPR-intensive industries found that they generated around 29% of all jobs in the EU between 2014-2016 (direct contribution), with 14% in design-intensive industries. This means that over 30 million Europeans were employed by design-intensive industries in that period. Design is important for consumers who often choose a product based on how it looks. Well-designed products create an important competitive advantage for producers and companies that invest in design tend to be more profitable and grow faster.
To encourage producers to invest in designs, there needs to be accessible, modern and effective legal protection for their design rights. Currently, there is a broad range of legal tools to protect designs at national and EU level. This gives right holders flexibility and a choice of protection that can be used according to their needs.
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