Design protection

According to the legal definition, the term “design” refers to the appearance of a whole product or part of it. It can be two-dimensional or three-dimensional and can result in particular from the characteristics of the lines, contours, colors, shape, surface structure or materials of the product itself or its decoration. Design law therefore protects all work results that are commonly referred to under terms such as product design, graphic design, fashion design, jewelry design, etc.

By registering the design, you receive a kind of monopoly right that allows you to prohibit others from manufacturing or selling products with your design. If a third party uses your design without your permission, you can demand an injunction and damages. A registered design also has economic advantages. It can be marketed by licensing it or selling it to a third party. It also has a high marketing value that can be used in advertising (“protected design”).

For a design to be legally protected, two conditions must be met: novelty and individuality. In contrast, the design does not have to demonstrate any particular level of creativity or originality. In this respect, it differs from copyright law. Since design also protects pure craftsmanship, it is the appropriate protection right for product design, graphic design, fashion design, etc.

A design is considered new if no identical design was disclosed before the filing date. You therefore always have to compare the design with the forms already known at the time of filing. If the design is already known one-to-one, or if the design only differs from the previously known forms in insignificant features, then it is not novel. There is one important exception, however: the designer is granted a so-called grace period. This means that a disclosure of the design does not affect novelty if the design was made available to the public by the designer or his legal successor within 12 months before the filing date. The grace period is intended to give the designer time to assess the market success of a design before legally protecting it.

To determine whether a design has individual character, it must be compared with the designs that are already part of the known repertoire of designs on the day of filing. Individual character exists when the overall impression of the design differs from the overall impression created by a previously known design. The law takes into account the degree of freedom of the designer when developing the design. There is therefore an interaction in such a way that the greater the designer’s freedom of design, the more a design must differ from previously known designs. The degree of freedom of design is also determined by how many designs already exist in the respective sector. If there are already a large number of designs for certain products (e.g. sports shoes, cutlery, etc.), then the designer’s freedom of design is reduced, with the result that a relatively low degree of individual character is sufficient for the new design to be protectable.

In principle, the designer(s) are entitled to register a design. If the design has been transferred, this right is granted to the legal successor. When the application is submitted, it is not checked whether the applicant has the right to the registered design. To avoid any subsequent disputes, it is advisable to regulate any transfer of the design from the designer to a legal successor with a professional contract. We would be happy to provide you with a commented sample contract for this purpose.

The rule of thumb is: the sooner the better! In design law, the so-called priority principle applies, i.e. a younger design prevails over an older design. Since priority is generally determined by the filing date, it makes sense to register a design as soon as possible. As soon as the design has been entered in the register, you can then enforce your claims (injunction, damages, etc.) against all designs whose priority is after the filing date of your design.

It is important that the filing of the application secures the so-called seniority of your design. With registration, the application then becomes a full right. How quickly this happens depends on the capacity of the trademark office. If everything goes smoothly, the application sometimes only takes about a month. The European Union Intellectual Property Office (EUIPO) is usually a little faster than the German Patent and Trademark Office (DPMA).

If you register a German design electronically, you save a little on registration costs. It’s only 10 euros, but it’s better than nothing. The real advantage of an electronic design registration, however, is that it’s quicker and less prone to errors, as the information can be validated as you enter it.

In principle, you can also register a design without a lawyer. However, we advise against this. The design is essentially registered without an official examination. This makes it all the more important to ensure that the registration is carried out correctly. In the worst case, mistakes can lead to the design subsequently turning out to be unprotectable and therefore worthless. To prevent this, you should commission a specialist lawyer for industrial property rights with experience in design law to register it.

Design infringements are a complicated matter. There are usually cross-connections to other protective rights (trademarks, copyright, protection against imitation under competition law) and a comprehensive range of legal instruments (warnings, interim injunctions, cease-and-desist declarations, cancellation proceedings, infringement proceedings, etc.). If your design has been infringed or someone accuses you of infringing a design, we are at your side with our extensive experience as a competent and experienced partner.

Design protection can be maintained for up to 25 years. The time is divided into protection periods of 5 years each. This allows you to maintain design protection (only) for as long as it makes economic sense for you.

Design protection does not have to be expensive. The costs consist of official and legal fees. Official fees start at EUR 60 for a single German design or EUR 350 for a so-called community design. In addition, there are legal fees. Lawyers experienced in design law can usually offer you fixed prices for this. Please feel free to contact us about this.

European law also protects designs that are not registered to a certain extent. However, a registered design has numerous advantages over a so-called unregistered Community design.

The protection period of a registered design is longer (up to 25 years vs. 3 years), allowing you to make the most of the commercial potential of a design.

Enforcing a registered design is much easier. The reason is that a registered design is presumed to meet the requirements for protection of novelty and individuality. Enforcing an unregistered design, on the other hand, is an uphill battle, more complicated, less secure and more expensive.

The scope of protection of a registered design is greater. The registered design can also be used to take action against (allegedly) accidental parallel developments and not only against deliberate imitations.

A registered design can be easily marketed (keywords: license and sale). With registration, you have something tangible that can be made the subject of a legal transaction. Registration also indicates a certain economic value. With unregistered Community designs, you have to forego these advantages.

Theoretically, perhaps yes, but in practice, clearly not. The legislator has had something in mind when it protects both types of intellectual property with separate laws and instruments.

If you protect a design with the DPMA or a Community design with the EUIPO, you have an official registration right with “sign and seal”. This helps considerably when enforcing it against imitators or when marketing it. A copyright is not registered anywhere (although there are a few scammers on the Internet who offer to register a copyright for you in private registers). So whenever you want to enforce a copyright, you first have to prove that it is even protectable as such, that you are the author, when exactly the work was created, etc. This makes enforcing the right so difficult that in many cases it makes no economic sense.
In addition, copyright and design law have different protection requirements. The bar for copyright protection is potentially higher. This means that in many cases in which design protection could have been obtained, copyright does not apply.

Brands and designs are fundamentally different objects of protection. Brands are symbols that are understood by the public as an indication of commercial origin. Designs, on the other hand, are the external appearance of a product or part of it.

It is true that there are some trademarks that protect designs. One example is 3D trademarks that show famous product shapes and are understood by the public as an indication of origin (e.g. the Coca Cola bottle). On the other hand, there are also designs that are actually trademarks but are used as patterns (e.g. the “LV” by Louis Vuitton).

However, such cases are exceptions and not the rule. Normally, it makes sense to protect brands as brands and designs as designs. The respective scope of protection of a brand or design is adapted to the respective object of protection and is better suited to taking action against typical forms of infringement. If you have any doubts as to whether a design or a brand is more suitable for you, please feel free to contact us.