What is a design?
A design is defined as the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself or its ornamentation. Designs can be both two- and three-dimensional or a combination of both. An example of a three-dimensional design would be the original three-dimensional shape of a handbag, the combination of patterning, decoration and colours on the handbag, if original, could be protected separately as a two-dimensional design, regardless of the product to which the design would be applied now or in the future. Example of types of frequently registered designs are the shape and appearance of packaging, furniture, clothing and consumer goods.
Why protect your design?
You wish to maintain the exclusivity of your design and prevent others from copying it. A registered design confers on its holder an exclusive right to prevent others from copying, importing, selling or in any other way using the design without authorisation, as well as, where applicable, claiming damages. If the appearance of your design is key to the success of your product on the market then a design registration is to be recommended.
In order to be eligible for protection a design must be new and possess individual character. A design shall be considered new if no identical or almost identical design has been disclosed at the time of registration. Individual character refers to originality and a sufficiently significant departure from the appearance of already existing designs. This means that applying minimal modifications to an already existing product will on the whole not be sufficient to pass the individual character test. The requirement for novelty and individual character is not examined prior to registration. The question of the validity of your design will only come into play if you start legal proceedings against another party which is copying your design. In principle a registered design will be considered valid unless the infringer can prove that the design is not new or original. The more original your design is the more likely it will pass the individual character test and the more likely you will be successful in having copycat products banned from the market.
If you have questions regarding the requirements of novelty and individual character, please contact us.
Before we can register your design we need to have proper drawings of your design. In order to advise you we need to be informed about the distinctive features. These must be clearly distinguishable in the drawings. If you wish to furnish us with your own drawings we will discuss the necessary requirements with you. Alternatively, you can instruct us to create suitable drawings. Once the drawings are deemed appropriate we will apply for registration in the countries of your choice. Frequently, customers decide to apply for an EU design registration because of the relatively low costs and the broad scope of protection in 28 countries. After filing you have a six month period within which to file in other countries whilst maintaining the filing date of your first filing. Once your design has successfully proceeded through the examination stage it will be registered, you will receive a registration certificate and you will be able to label your product “registered design”. An EU design registration can be renewed every five years up to a maximum of 25 years.
Both EU and Benelux designs are valid for 5 years and can be renewed for additional periods of 5 years up to a maximum of 25 years. The fees for filing and registering a design, including our advice, may vary depending on the number of drawings you wish to file and the number of designs you wish to file simultaneously. In addition we charge 7% for miscellaneous office expenses and 21% VAT. Please contact us for detailed information on our fees and a quote for your specific situation.
If original elements of your design have been copied then this could very well be a case of infringement. The more original your design the easier it usually is to deal with the infringer. Contact us for further information and advice. If a third party claims that you are infringing their design, then we can also assist. First of all, by making sure the third party has a valid design right to rely on, secondly by helping with negotiations and thirdly by assisting you in legal proceedings.
In the more than 30 years of our existence we have built up a wealth of experience in many different industries, including mechanical engineering, chemicals, electrical engineering, the information and communication industry and biochemistry. In addition to filing and registering designs, we can also offer the following services: advice on how to file your design and what kind of drawings or pictures should be filed; keeping track of renewal deadlines and paying renewal fees; providing assistance in resolving disputes and negotiating settlements; providing expertise in legal proceedings; preparing and evaluating licence agreements; preparing deeds of assignment and recording name and address changes, as well as assignments, in official registers. Please contact us if you have questions as to how we can assist you.