Secure your business success with a design registration

Every entrepreneur wishing to be successful with designs should have his or her design protected early on. We provide design right registration according to the highest standards and following ample practice of the competent IP offices. You can rely on our expertise and many years of work experience.

Content

• What can be registered as a design?
• What requirements must the design meet?
• What are the advantages of registering a design?
• What must I do to register a design?

What can be registered as a design?

The possibilities are as diverse as the business world. The focus is always on the visual impression of a physical object.

These can be, for example:

• The appearance of a garden chair
• The designed packaging of a product
• The design or pattern of a garment, piece of clothing or shoe
• The logo of a company
• Digital graphics, such as in web design
• A specific font type (typeface)
• The formulations in the law remain quite abstract

According to them, the protected subject matter of a design right registration can extend in particular to:

• lines,
• contours,
• colors,
• shapes,
• surface structures and
• materials

of an industrially or manually produced object.

It is often not easy to determine precisely whether a certain design is eligible of protection under the relevant design laws applicable. The design or pattern intended for protection must regularly be compared with pre-existing designs of third parties in individual comparisons.

What protection requirements need to be fulfilled?

The competent IP office (e.g. German PTO or EUIPO) does not check whether your design conflicts with other registrations. You must ensure this yourself. Carelessness in this regard can lead to competitors being able to have your design right registration cancelled in design invalidity proceedings.

If the design you have created and commercially used on the market falls within the scope of protection of an earlier design registration and if the latter right is infringed, a costly legal warning letter (C&D) as well as a design right infringement lawsuit could follow as a consequence.

It is therefore worthwhile to rely on the support of specialist IP lawyers and to thoroughly research the availability of your commercially used design well in advance. Our clear specialization in intellectual property rights including design rights creates more legal certainty in this respect.

It is important that your design meets the following requirements, among others:

Novelty of the design

If you want to protect your design, you have to act fast. It can only be protected as long as it is considered “new”.

The law requires that the design has not been “disclosed” before the filing date. However, this may be assumed if, for example

• the product (bearing the design) in question is already being sold,
• the design has already been presented to the public at a trade fair or
• advertisements or other illustrations already show the design publicly.

A disclosure detrimental to novelty may also be made by the subsequent applicant or designer himself. Novelty may be “destroyed” already in circumstances where the design is made accessible to specialist circles. This refers in particular to competitors and other industry experts.

Our recommendation: If the disclosure was less than 12 months ago, a design right application may still be successful. Design registrations within the so-called “grace period” are generally considered “new”.

This is where the first difficulties become apparent. The question as to whether or not you have already disclosed the design at stake can be answered only by an experienced IP lawyer. According to the law, the grace period can also be initiated by a third party.

Even more complex is the examination whether someone else has already disclosed an (almost) identical design. This can only be determined by means of thorough research. We can take care of this for you.

Individual character of the design

The design needs to show individual character.

It is required that your design has individual (i.e. unique) character.

Roughly speaking, its overall impression must differ from other designs on the market. One could also speak of a “unique” character or impression. Relevant here is the overall impression given by your design on the “informed user” working in the specific sector of the trade.

Example: The overall impression of a designer chair can depend decisively on the shape of its backrest and the materials used. If, on the other hand, you only change the color of the same chair, the overall impression is usually not different.

Further requirements

In addition, you must meet further important requirements, which are examined by the responsible PTO. There include among others the following:

• The design must be capable of being designed and protected (see first section) and an error-free application for registration must be submitted.
• The design does not offend principles of morality or public order.
• The design does not contain signs of public interest (e.g. a national coat of arms, design of current money coins).

What are the advantages of securing a design registration?

Whether a product is successful depends crucially on its design. In some industries design is even the most important criterion.

With the registration and publication, you become “master” of your design.

This means in detail:

• No one else may use your design without your permission. You are thus protected against competitors seeking to unfairly ride on the coattails of your business success.
• If a competitor imitates your design, you can take legal action against such conduct. You are entitled to damages and you can demand the omission of future use. Under certain circumstances, the competitor may even have to attend to the full destruction of all objects that correspond to your design.
• Your design becomes a commercial object. You can exploit same, for example, by licensing it to third parties. Successful designs also increase the value of your company.

It is essentially up to you how far your design right will get protected.

If you are only targeting consumers in Germany, an application to the German Patent and Trademark and Office (GPTO – DPMA) is usually sufficient. Your design is then protected merely in Germany.

In addition, EU-wide design protection or even extension to countries outside the EU is often advisable. With the “Community Design” or an “International Design Registration” you can protect your product design in a multitude of territories in one go.

In doing so, the costs and risks must be weighed up against the benefits.For this, we give you a clear recommendation based on years of experience.

An unregistered design (or correctly “unregistered Community design”) is only protected to a very limited extent and merely for limited period of time of three years. You can raise claims against a third party (e.g. a competitor) successfully only if he/she had knowledge of your design and in circumstances where the counterparty’s product actually constitutes an “imitation”.

This proof is often difficult. In many cases, unfair competition and copyright laws do not help either. Therefore, the application for registration of a design offers by far the best protection for a unique and successful product design.

In contrast to trademark law, there is no obligation to use the design after the expiration of certain deadlines. It is sufficient to maintain design protection through continuous extensions of your design right registration.

What needs to be done for a proper design registration?

Essentially the following steps are required:

• We discuss with you how far protection of your design right should extend. In this way you will receive a tailor-made solution from us and avoid unnecessary costs.
• We check for you whether your design is eligible for protection under the relevant law regimes.
• If you instruct us to do so, we will thoroughly research whether your design conflicts with other designs. In this way, you may avoid that competitors take ample legal action against your design registration or its use on the market.
• We submit the application for registration of your design to the competent IP Office. Here it is important that the object (subject matter of protection) of your design is represented as precisely as possible.
• We make all relevant fee payments for you in good time and keep an eye on all other formalities.

After successful examination by e.g. the GPTO (DPMA), EUIPO or WIPO, your design is registered and (unless otherwise requested) published. In individual cases, deferment of publication can also be requested from the IP Offices.

Now your design is generally protected for five years. You can extend the registration up to a maximum of 25 years. If you wish, we will carry out the five-yearly renewals of your designs and monitor the corresponding terms of protection.

We will be glad to help you with the filing of a proper design right application and use our longstanding expertise to protect and enforce your design rights.

Picture Credit: Nick Adams | Unsplash