Design law

Design law protects the appearance (design) of new products, such as clothing, furniture or packaging, against imitation. A registered design gives exclusive rights and prevents copycats. We guide you through the registration and enforcement of your design right, including in the event of infringement.

What conditions must a design meet?

A design falls under the protection of intellectual property law if it is a new appearance of a product with individual character (Article 3.1 of the Benelux Convention on Intellectual Property (BCIP)). The ‘individual character’ is reminiscent of copyright, the ’novelty requirement’ of patent law, and the ‘appearance’ of trade mark law. Take good note that each of these requirements has a different meaning in design law. That is also what makes design law one of the most complicated IP rights. So let us go through the conditions one by one.

• The design must be new. This is an open goal, because if you slavishly take over a competitor’s design, you cannot claim protection for it either. But do take note, because this novelty requirement also means that you cannot already put your object on the market or publish it and only file it as a design afterwards. So no identical design may have been made available to the public before you file the application. This also covers publication of the design on a website, in an advertising leaflet or at an exhibition.
• The design may not be contrary to public order and may not be offensive.
• The design must be unique. This means that the design must have individual character and so must not closely resemble designs that were already put on the market earlier. It is advisable to seek legal advice on this, since someone with knowledge of design law is better able to assess whether an identical or closely resembling design has already been disclosed or published.
• The external features of the design may not be dictated by a technical function. If they are, the design may perhaps qualify for protection under patent law. Software, such as computer programs, is excluded from protection for that reason too.

What definitely does not fall under design law?

In the spirit of prevention being better than cure, it is worth at least bearing in mind what kinds of design do not qualify for design protection at all. Apart from the requirements a design must meet, there are also, conversely, a number of features a design can have that mean the design will not attract any protection at all. These are set out below.

• The technical-function exclusion. This element has come up earlier, but it is worth pausing on it briefly. Technical inventions should be protected solely by the patent monopoly. In essence it comes down to this: the technical-function exclusion applies where the essential functional features of the design are attributable solely to the technical result, and it is not decisive whether there are alternatives with which the same technical effect can be achieved. The key word is ‘solely’, so the mere fact that an object has a functional use does not by definition exclude that object from design protection. That is only the case where there is insufficient room for variation in form and so no design freedom. Think, for example, of a teacup: how the designer designs the handle of the cup is entirely up to them, which means the teacup can indeed be protected by design law, despite the fact that the teacup as such has a function.
• The appearance of a connecting part. Here you should think of the design of the connection of a vacuum-cleaner hose to the vacuum cleaner. Without that connection the vacuum cleaner does not work. The idea behind this is that, when repairing the vacuum cleaner, the consumer is not tied to the manufacturer’s parts but can also choose the same part from another manufacturer.
  Connecting parts of a modular system, by contrast, do qualify for design protection. This sounds complicated, but it is not, because here we are talking about the system that allows Lego bricks to be stacked on top of each other, or chairs in a hall to be linked together.
• A design in which use has been made, without the rights holder’s permission, of that holder’s trade mark or work.
• No use may be made of arms, flags and (state) emblems in the design of the model, because the symbolic function of such signs and the interest in not undermining trust in them may not be impaired.
• The characteristic features of the design are insufficiently apparent from the filing. After all, the register must give a complete overview of everything that is protected; otherwise it cannot be assessed whether an infringing design has the same appearance as the filed design. It must therefore be possible, on the basis of the design in the filing, to identify that design clearly.

Do the above exceptions mean that these designs cannot be entered in the register? Strangely enough, no. The filing to be registered is barely assessed on the merits. The only thing that is looked at is whether the design is contrary to public morality or public order. So no attention is paid to whether the design is new and has individual character or falls under the technical-function exclusion. Even so, it is essential to register your design, because the mantra where infringement is concerned reads: no registration, no compensation.

Registering a design: how and why?

The why

Only once your design is registered can you take steps against competitors who misuse your design by copying it. For those of us who were sadly not born with a talent for drawing or making things, the following will sound familiar. When it comes to the question of what design law offers protection against, it is not the object actually marketed by the design holder, but instead the filed design. So it is the depiction of the design in the filing (the design registration) that is protected and that therefore serves as the starting point in answering the questions “what is protected?” and “what is being infringed?”. But then, a black-and-white drawing in three-dimensional form of a Porsche will most probably look different from the manufactured Porsche. How do we resolve that? With a little imagination. We look at the manufactured Porsche and we examine whether it shows the same appearance as the filed design of the Porsche, or whether it creates the same overall impression on the informed user. That means that if the manufactured Porsche has an umbrella on the roof and the design registration does not, then the umbrella plays no part in the question of whether infringement has occurred.

The how

The design must be registered with the Benelux Office for Intellectual Property (BOIP), or with the International Bureau where the Benelux is designated as the ‘country’ for which protection is sought, or with the European Union Intellectual Property Office (EUIPO). For all three offices, they only assess whether your design meets the condition mentioned earlier (not contrary to public order or morality). A very low threshold, then. If the office in question gives the green light, your design obtains five years’ protection. This right can then be renewed every five years, up to a maximum duration of twenty-five years. Note that the design right only arises at the moment the filing is registered.

Exception to registration

It now seems as though it is always necessary to register your design, but the law would not be the law if there were not an exception to this. The law in fact makes a distinction between registered and unregistered Community designs. A Community design offers protection in all 27 countries of the European Union, and if you choose not to register your design, then your design is protected only for three years from the moment the design is disclosed. As mentioned, a registered design has a maximum protection period of 25 (5×5) years. So that is quite a difference. Moreover, the holder of an unregistered Community design only has the right, for three years, to act against one-to-one copying of the design. If a competitor puts a comparable design on the market, the holder of an unregistered Community design can do nothing about it. With a registered Community design this is possible.

What can I do with my design right?

All well and good, this design right, but what use is it to you in concrete terms? Well, how about determining, in an industrial or commercial setting, who may use your design and for what? Here you can think of putting the design on the market, selling and supplying it, importing and exporting it, renting it out and exhibiting it. But stocking the design for one of these purposes by competitors is also not permitted without permission. If, as the design holder, you do want to give permission for this, then it is usual for a fee to be paid in return. Such a form of permission is usually cast in a licence agreement in which the design holder grants a licence for use of the design.

What to do about infringement as a design holder?

Other parties may not put designs on the market that resemble your protected design too closely. Such as counterfeit products. A product that is not a counterfeit but does resemble the protected design can also constitute infringement. If parties are guilty of this, then design law offers you the possibility of taking action against the infringing party. So what should you think of here? Well, to begin with, you can claim that the infringement be stopped. In addition, you can claim an immediately payable penalty, or full damages, an account of profits, reimbursement of the legal (litigation) costs, destruction of the infringing products, inspection of the relevant records, and disclosure of the production and/or purchasing costs incurred, including the turnover achieved. These can be claimed either through a letter of claim or through legal proceedings.

How should you respond if you have received a letter of claim about your design?

The other side of the coin is, of course, that you are not the design holder but the potential infringer. And such a letter of claim on your doormat or in your inbox can be a shock. That is why it is not wise to agree to the demands in the letter of claim without investigation, and without seeking advice on this and having a response drawn up by a lawyer or legal adviser.

It could well be that you can knock out the design right by having it declared invalid. For example, because the design does not meet the novelty requirement. An example of this is the recent Puma judgment. Puma had developed and registered a specific shoe design, the ‘creeper model’. But a competitor argued that the design had already been disclosed earlier by Puma itself, before it was officially registered. And that was by none other than the singer Rihanna, who at the time had been appointed creative director at Puma and who wore the shoes in question in a post on her own Instagram account. The European Court then held that Puma’s design had, as a result, indeed already been disclosed before it was registered. That the shoes were not prominently present in the photo made no difference to this, because visible means disclosed.

Besides trying to have the design declared invalid, you can also choose to invoke the existing body of designs (the design corpus). This means that you point to the large number of resembling designs, so that the originality of the design can be called into question. And should that not fly, you can always still examine whether the design is not purely technically dictated.

Questions for a design law lawyer

Design law is less well known than copyright or trade mark law, in part because of its complexity. And that means designers and companies are well advised to make sure precisely that they are alert to any design-law claims they can bring or, conversely, receive. Should you have questions about your design, you can of course contact our design law lawyer.