Design is an appearance of the product or its part resulting from the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation.
The aim of design protection is the promotion of innovation and prevention of copying of creative works.
Designs can be registered and unregistered. Here is a brief comparative table demonstrating differences between registered and unregistered designs in the EU:
| Unregistered Design | Registered Design | |
|---|---|---|
| Term of protection | 3 years from the date of disclosure | 5 years (25 years if renewed) from the date of filing of an application |
| Requirements for protection | Must be new and have individual character | Must be new and have individual character |
| Scope of protection | Unitary character throughout the EU | Unitary character throughout the EU |
| Costs | No fees | Filing and renewal fees |
| Disclosure | Disclosure is compulsory and is a starting point of the protection | Disclosure can be deferred to up to 30 months without affecting the starting point of the protection |
| Rights of design holder | Prevent intentional copying (only identical designs) whereas independent creation of similar/identical designs cannot be prevented | Prevent identical and similar designs, whether copied or independently created |
| Infringement claim | Design holder must prove design ownership and the act of copying by the infringer | No need to prove design ownership and the act of copying |
| Recordation at Customs to detect counterfeits | Not possible | Possible |
As shown above, registered designs have a number of advantages when it comes to the nature of protection and give certainty in case of infringement claims or risks. Unregistered designs on the other hand do not require additional costs and can still guarantee a certain level of protection. The choice of whether to apply for the registration or not, therefore, depends on a business strategy, estimated lifespan of the design, the uniqueness of the design and investments associated with the creation, marketing and promotion.
If there is a doubt whether a design will be successful and can return the costs, one may rely on unregistered design protection for a year and convert it into a registered design if necessary. The application for design registration must be filed no later than a year after the disclosure, otherwise the design may be invalidated later. Furthermore, it is important to ensure that the owner of the design at the moment of disclosure and the applicant of the registered design are the same.
Bergenstråhle & Partners can help you to:
- Make an assessment and develop a right IP strategy
- Advise on the nuances of registered and unregistered designs
- Ensure that the chosen path reflects your expectations and business goals
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.
