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 | 5-25 years (renewal every 5 year) 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 more certainty in case of infringement claims or risks. Unregistered designs on the other hand do not require additional costs and still guarantee a certain level of protection. The choice of whether to apply for registration or not, therefore, depends on 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 up to a year and apply for a registered design later 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. To wait with an application for registration could however also be connected with a risk as someone else could have applied for a similar design during the meantime.
Bergenstråhle & Partners can help you to:
- Make an assessment and recommend a strategy
- Advise on the nuances of registered and unregistered designs
- Ensure that the chosen path reflects your expectations and needs and supports the company’s objectives.
