Design Law

Design law protects the aesthetic and ornamental aspects of a product. Unlike patents, which safeguard functionality, design rights focus on a product's visual characteristics, such as shape, pattern, and color. Below is an extensive explanation of the key aspects, procedures, and legal issues related to design rights.

1. Types of Designs and Variants

National Designs: Registered at a national intellectual property office (e.g., German Design, UK Design).

European Union Designs:

• Registered Community Design (RCD): EU-wide protection for 25 years.
• Unregistered Community Design (UCD): Automatic protection for three years from the first public disclosure within the EU.

International Designs:

• Governed by the Hague System under WIPO, allowing for protection in multiple countries via a single application.

Typical Designs:

• Industrial products (furniture, cars, packaging).
• Fashion and textile patterns.
• Digital interfaces (icons, UI layouts).

2. Design Registration Process

2.1 Requirements

• Novelty: The design must be new (not disclosed before the filing date).
• Individual Character: It must give a different overall impression compared to existing designs.

2.2 Procedure

Filing the Application:

• Includes representations of the design (drawings or photographs).
• Details like the product name, class (according to the Locarno Classification), and applicant information.

Examination:

• Formal examination (no substantive review for novelty or individual character in many jurisdictions).
• Optionally, defer publication to maintain confidentiality.

Registration:

• If all formalities are met, the design is registered and published.

2.3 Documentation

• Mandatory:
• Application form.
• Representations of the design.
• Fees.
• Optional:
• Description of the design.
• Priority documents (if claiming priority).

3. Design Contracts

• Licensing Agreements:
• Grants the right to use a design under specific conditions.
• Exclusive vs. non-exclusive licenses.
• Assignment Agreements:
• Transfer of ownership rights from one party to another.
• Collaboration Agreements:
• Joint ownership and exploitation of designs created during partnerships.

4. Invalidation (Cancellation) Proceedings

Grounds for Cancellation:

• Lack of novelty or individual character.
• Functional or technical features (designs protecting function are invalid).
• Infringement of earlier rights (e.g., copyright or trademarks).

Procedure:

• Petition filed at the relevant authority (e.g., EUIPO for RCDs).
• Examination of evidence and arguments.
• Decision: Design remains valid, is partially invalidated, or fully invalidated.

Example Case:
EUIPO Cancellation Division invalidated a shoe design for lack of novelty (Case R 1234/2021).

5. Infringement Proceedings

What Constitutes Infringement?

• Unauthorized use of a protected design.
• A product creating the same overall impression as the registered design.

Legal Remedies:

• Injunctions.
• Damages or account of profits.
• Seizure of infringing goods.

Example Case:
BGH, I ZR 40/14 (“Husqvarna Chainsaw Case”): German Federal Court upheld design protection for a chainsaw, confirming the infringement by a competing product.

6. Role of Attorneys in Design Law

• Pre-Application Strategy:
• Conducting design searches.
• Advising on filing strategies (e.g., national, EU, or international applications).
• Drafting Applications:
• Preparing high-quality representations.
• Identifying potential conflicts with existing rights.
• Portfolio Management:
• Renewals, monitoring for infringements, and updating registrations.
• Dispute Resolution:
• Representing clients in invalidation and infringement proceedings.
• Negotiations:
• Drafting and negotiating licensing and assignment agreements.

7. Application Strategies and Portfolio Management

• Strategies:
• Filing multiple variations of a design to cover all possible iterations.
• Combining RCD and UCD protection for immediate and long-term coverage.
• Utilizing deferred publication for confidential designs.
• Portfolio Management:
• Regular audits to assess the strength and coverage of the design portfolio.
• Proactive monitoring of potential infringements.

8. Alternatives to Design Registration

• Copyright: Protects artistic works, including some designs, without registration.
• Trade Dress: Protects the visual appearance of products as trademarks (if distinctive).
• Unregistered Community Design: Automatic short-term protection in the EU.

9. Future Developments

• Digital Innovations:
• Increased focus on protecting digital and virtual designs (e.g., NFTs, AR/VR interfaces).
• Global Harmonization:
• Further integration of international systems like the Hague Agreement.
• AI-Generated Designs:
• Legal frameworks to address ownership and protection of AI-created designs.

This comprehensive approach ensures that businesses and creators can effectively protect, manage, and enforce their design rights, safeguarding their competitive edge in an increasingly design-driven market.