What do the terms "novelty" and "individual character" mean and why are they so important?
As mentioned in our blog post of 23 April 2024 (link), several criteria must be met to ensure the legal validity of a design registration.
A design should not only possess and preserve its novelty ...
The (Austrian and EU) law generally provides for a grace period of 12 months before the filing date or the priority date of a design. This period begins once the design is first published. The disclosure of the design can in principle take place anywhere in the world, the decisive factor being whether the specialist circles in the EEA could become aware of such designs in the normal course of business. Besides physical disclosures (e.g. in a print medium, exhibition at a trade fair, etc.), also online disclosures (e.g. advertising on social media platforms, offers for sale online on own websites or third-party trading platforms, etc.) are relevant.
The decisive factor for calculating the grace period is the day of disclosure, namely the date on which the design is made public and not the date on which specialist circles in the relevant industry become aware of it.
When planning a design application, care should be taken to ensure that it is filed as quickly as possible after completion of the design or the decision to market the design, but in any case, within 12 months of any kind of disclosure of the design. It is therefore advisable to note these dates in order to initiate the design application in good time.
... but it should also have individual character!
A design must also have "individual character". This means that the overall impression that the design creates on an informed user must be different from the overall impression that another, previously known, design creates.
An informed user is someone who, due to personal experience or extensive knowledge in the field of the designs concerned, is particularly vigilant and aware of various designs in the field without being an expert.
To ensure the individual character of a design, it is advisable to examine existing designs in the same line of business and to question whether your own new design differs sufficiently from previously known designs.
Negative impact often follows only after registration
Many IP offices, including the Austrian Patent Office, do not carry out an ex officio examination regarding the novelty and individual character of designs as part of the registration process for design registrations. This examination only takes place within invalidity proceedings initiated by an application for declaration of invalidity, which can be filed by a third party after the design has been registered.
It is therefore essential to ensure, as early as the design conception stage, that the design to be protected is new (i.e. does not just differ from previously known designs in minor details) and has individual character (i.e. creates a different overall impression than previously known designs). Above all, it must be ensured that the product in which the design is used is not launched too early before a design application is filed in order to ensure the legal validity of the design registration. The design application must be filed no later than 12 months after the first disclosure.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.