Design Law

In a society in which everyone seems to be striving for individuality, the design can be a decisive factor in the choice of a product and, as a consequence, for the economic success of a company. A registered design will effectively protect your products against imitation and plagiarism at a comparatively low cost. And for the first three years after a design has first been published, it will even automatically receive Europe-wide protection without any additional European registration necessary.

 

What is protected under Design Law?

 Design Law protects the appearance of the whole or parts of a product resulting from the features of the lines, contours, colors, shape, texture or material of the product itself or its trimmings. Any industrial or handicraft item, including its packaging, can be protected. Design protection extends to the design of a three-dimensional item, such as a piece of furniture or a machine, as well as to that of a surface decoration, e.g., a fabric or wallpaper.

An abstract idea, certain styles or motives do not receive protection; only the concrete appearance of a product is eligible for protection.

 

What are the prerequisites for design protection?

 For registrability, a design must be new and unique, i.e., no (materially) identical design must have been made available to the public before the date of application for registration, and the overall impression of the new design in the eye of the beholder must be different from the overall impression of any prior design.

As the authorities in charge of registering a design do not investigate whether a design is indeed new and unique, it is usually necessary to carry out a design search before registering a design. This search will reveal all identical or similar designs already registered so that a possible conflict with any third party can be avoided.

 

What is the Extent of Design Protection?

 Designs can be registered for various territories; for example, a German design can be registered with the German Patent and Trademark Office to be protected in the entire territory of the Federal Republic of Germany. The same is true for national design registrations in other countries.

Moreover, a design can be protected in the entire EU. In this case, a so-called Community Design (European Design) with the European Office for Intellectual Property (EUIPO) must be filed.

An international registration of a design is also possible in order to extend the protection to all member states of the Hague Convention, e.g., to Switzerland.

When first registered, the protection remains valid for five years, and it can be kept active through regular payments to the authority responsible for a maximum of 25 years.

 

What is an Unregistered Design?

 Aside from the registered designs, a so-called unregistered design also exists in the EU. This right comes into existence whenever a design is made available to the public in the EU but will expire after three years with no possibility for an extension.

Furthermore, the legal enforcement of a claim resulting from an unregistered design can be more complicated and tedious than the enforcement of a claim resulting from a registered design, due to the fact that a registered design legally implies that the prerequisites for protection – novelty and competitive individuality – are existent. In the case of a legal dispute, however, proof of these existing prerequisites must be presented; otherwise, the case will be lost.

 

Which claims does the owner have, and what is to be done in case of an infringement of rights?

 If a third party’s product falls within the scope of protection of a design, the owner is entitled to several claims towards imitators or plagiarists, for example, the owner can demand removal of the impairment and, in case of a risk of repetition, injunctive relief. For the enforcement of these claims, it is of no importance whether the infringer is or is not at fault.

Moreover, the owner has the right to demand disclosure, damages and the destruction of the infringing products.

In case of a design violation, it is important to quickly arrange for the necessary legal steps to be taken. In general, sending a warning letter to the manufacturer or seller of the product is the first step: If an out-of-court solution cannot be found, the matter must be taken to court, either through an interim injunction or through proceedings in the main action.

 

Which further Industrial Property Rights exist?

 Designs are one of the protected rights, others of which include technical property rights, copyrights, trademarks and rights under the Unfair Competition Act. Therefore, it is important to incorporate them into your overall protection strategy.

Our qualified team are happy to assist you with any questions concerning design law. Are you planning to register a design, or are you the owner of a protected design which has been copied by a third party without your permission, or has there been a claim against you based on the alleged violation of a design? These are all examples of cases that we can help you with.

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