The design of a product can be protected by an intellectual property right through a registration before an intellectual property office. In this article, it will be compared the design systems of China and European Union.
In general terms, the scope of protection of a design encompasses the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colors, shape, pattern, texture and/or materials of the product itself and/or its ornamentation.
The advantage of having a registered design is the exclusive right to exploit the design. This exclusive right includes, namely, the making, offering, putting on the market, importing, exporting, or using of a product in which the design is incorporated or to which it is applied, or stocking such a product for those purposes.
In China, the design registration is called design patent and is protected along with invention and utility model on the basis of Chinese Patent Law.
On June 1st of 2021, the fourth amendment to the Patent Law of the People's Republic of China entered into force, which made important changes in many aspects and some of these amendments regarding design patents will be discussed below.
The final revision of the fourth amendment was proposed in 2012 and promulgated on October 17th of 2020. China's current Patent Law entered into force in 1985 and has already been revised in 1992, 2000, and 2008.
The design patents, as well as the trademarks, geographical indications and other industrial property rights, are filed before the China National Intellectual Property Administration, located in Beijing.
The European Union law on designs dates to the early 2000s, with Council Regulation (EC) No. 6/2002 of 12 December 2001 on Community designs, amended by Council Regulation No. 1891/2006. Due to the date of the law, unlike the European Union trademark, the protected design in the EU is still called Community design.
Besides the registered Community Design (RCD), the EU legislation also protects the unregistered Community design (UCD). The scope of protection of the UCD is more limited, so the owner of a UCD can use a design without registration and has the right to prevent commercial use of a design only if that design is an intentional copy of the protected one, made in bad faith, i.e. knowing of the existence of the earlier design.
The European Union Intellectual Property Office (EUIPO), located in Alicante (Spain), is the responsible entity to receive and grant the applications for registered Community designs, as well as EU trademarks.
The European Union jurisdiction is part of the Hague Agreement concerning the international registration of industrial designs and, as a result of the new changes in Chinese law in order to bring it closer to the international practice, China's entry into the Hague Agreement seems to be next.
Scope, requirements and validity of rights
Protection of a part of a design
In the definition of a design, the Chinese Patent law innovates to bring the possibility to protect the design of a part of a product, which was already possible in the EU legislation. Now, in China, a portion of a product which cannot be separated or independently sold from the whole product can be protected, using broken lines to show the whole product and solid lines to show the partial design for protection, for example.
Accordingly to the Common Practice (CP6) of the EUIPO (Convergence on graphic representations of designs – 15 May 2018), the applicant may use visual disclaimers to indicate what is not intended to be protected and this can be achieved by excluding with broken lines, blurring or color shading the features of the design for which protection is not sought or by including the features of the design for which protection is sought within a boundary, thus making it clear that no protection is sought for what falls outside the boundary.
Requirements of protection
In both Chinese and European Union systems, a design will not be granted if it is contrary to public policy or to accepted principles of morality. In the EU legislation, it is included that an application will be refused if the design does not correspond to the definition of the Community Design Regulation and, in China legislation, it is said that a right will not be granted for any design that is detrimental to public interest.
The most important requirement is the novelty of the design.
In China, the novelty must be absolute, which means that a design must not have been published anywhere in the world before the date of application.
There is a six-month grace period which a design is applied for shall not lose its novelty under certain circumstances: exhibited for the first time at an international exhibition sponsored or recognized by the Chinese government; published for the first time at a prescribed academic conference or technical conference; disclosed by others without the consent of the applicant. And now, the new Patent Law adds a new circumstance: in a national state of emergency or extraordinary circumstances where the invention is disclosed for the first time and for the sake of public interest, and then is filed for patent application afterwards within six months of the disclosure.
In the European Union the design has also to be new, but the grace period is one year and there are no established circumstances. Therefore, this privilege gives proprietors the chance to determine whether it is worth to seek protection for a design or not.
In the EU legislation is also referred that the design must have an individual character, in other words, the overall impression of the design produced on the informed user must differ from the overall impression produced on such a user by any design that has been made available to the public before the date of filing of the application for registration or, if a priority is claimed, the date of priority.
Both in China and in the European Union, the Offices do not analyze these requirements of novelty and/or individual character, which will only be analyzed in case of cancellation/invalidation proceedings after granting the designs.
A Chinese patent design is valid for a maximum of 15 years from the filing date subject to the payment of annuity fees. The new Patent Law increases the term of design patents from 10 years to 15 years, which is a reflection of the preparation of China's accession to the Hague Agreement, since the minimum protection period for designs is 15 years among the contracting states of the Hague Agreement.
In the EU, a RCD is initially valid for 5 years from the filing date and can be renewed for 5-year periods, up to a maximum of 25 years. However, the protection of an unregistered design only lasts 3 years from the date of its first public disclosure within the EU territory.
- Applicant particulars (name, address and nationality);
- Designer particulars (name, address and nationality), if applicable;
- Priority document, if applicable;
- Photographs or Drawings of the product (views);
- Brief description of the design including: name of the product; use of the product, which determines the class of the product and the scope of protection; indication of the essential design feature(s), that is, the major difference(s) of the design from any prior designs patents (held by the owner or another company); a drawing or photograph for publication when the design patent is granted; specifics of the color used, if color is claimed; and other additional information that could add value to the application.
In one patent design application is possible to include the maximum of 10 products, if they are in the same class of the Locarno Classification and relate to each other. This option allows it to be a faster process and with lower costs, if compared to a single application system.
The registration procedure normally takes 6 to 8 months, from application until registration of the patent design.
- Applicant particulars (name, address and nationality);
- Designer name, if applicable;
- Priority document, if applicable;
- Photographs or Drawings of the product (views).
In an RCD application is possible to include unlimited products, as long as they belong to the same class of the Locarno Classification. Once again, this option allows it to be a faster process and with lower costs, if compared to a single application system.
A design application is granted within one month, approximately
Once the design has been granted, the owner is in the position to enforce his/her exclusive right to the design and to do this effectively the owner must be vigilant, through searching identical or similar designs on the IP Offices, especially on the markets that the design's owner operates, and monitor the marketplace by checking the press, trade publications and the web for companies using identical/similar design without the owner's authorization.
There are many options to enforce the right, namely applying to invalidation of an identical/similar design through China or European Union Offices, taking civil and/or criminal law measures before the Courts, sending cease and desist letters, trying to negotiate a settlement through mediation and arbitration, filing an application in Chinese or European Union Customs to control goods importation and exportation.
The Intellectual Property Rights (IPR) and their enforcement influence the conditions of trade and the harmonization between IPRs around the world allows rights holders to expand their businesses, make their knowledge reach places they probably would not reach and walk into towards a greater balance between developed and developing countries.
As for the designs, it is concluded that, despite some differences, the Chinese system is moving towards harmonizing rights in line with other jurisdictions, namely the European Union, the United States of America, Japan, South Korea, and international treaties.
According to WIPO statistics database1, last updated in March of 2021, despite the number of international applications for the protection of designs filed under the Hague System administered by the World Intellectual Property Organization (WIPO) having declined by 1.7% in 2020 compared to 2019, the design applications by Chinese applicants increased 22.7% compared to 2019 and China is ranked as the 9th country in the world with the most applications for international registrations. This is possible because the origin of an application is defined as the country/territory of the stated address of residence of the applicant, so applicants residing in a non-member country (as China) can file applications for international registrations if they have a real and effective industrial or commercial establishment within the jurisdiction of a Hague member. It can be expected that China's numbers will still increase when it becomes part of the Hague System.
1 World Intellectual Property Organization, Hague Yearly Review 2021 - International Registration of Industrial Designs. Available here.
This article was originally published in China IP Magazine.
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.