Companies developing new products often seek to maximise the available IP protection. Similarly, companies already selling products want to protect their existing designs to the greatest extent possible. To this end, it helps to understand the types of IP protection available around the world for designs, as well as the opportunities for overlapping IP protection. This chapter addresses the interplay between IP rights for the protection of designs. Specifically, it provides a brief overview of:

  • the relationships between patent, copyright and trademark protection for designs; and
  • the benefits and limitations of protecting designs in various jurisdictions.

The chapter summarises IP protection of designs in the European Union, Asia-Pacific and the Americas.

Protection in the European Union

In the European Union, design protection is available at national and EU level. Protection of a design via a Community design right does not prejudice any EU or national legislation affording other IP rights to a design. As a result, different kinds of IP right can coexist and overlap for designs in the European Union.

Registration regimes

The European Union has established an effective system of design protection through a registration regime. It is also party to the Hague Agreement Concerning the International Registration of Industrial Designs, which provides for a single application covering multiple signatory countries. Certain EU member states – namely Germany, France, Benelux, Italy, Spain, Greece, Bulgaria, Slovenia, Latvia, Estonia and Romania – are also individual signatories to the Hague Agreement. Countries that are not parties to the Hague Agreement include the United Kingdom, Ireland and Austria.

Under the EU Community Designs Regulation (6/2002), companies and their designers have two choices for design protection:

  • Obtain a registered Community design from the Office for Harmonisation in the Internal Market; or
  • Commercialise the design directly without registration by relying on the unregistered Community design right.

A registered Community design provides EU-wide protection for up to 25 years. Applicants without a place of business or branch within the European Union must name an attorney or patent attorney admitted to practise in the European Union. Design protection is granted for the two-dimensional (2D) or three-dimensional (3D) appearance of a product, provided that it is new and has individual character. However, novelty and individual character are not reviewed at registration. They will be examined only in later infringement or cancellation proceedings. In contrast, an unregistered Community design is granted by law without formalities. It provides protection for three years from the date on which the design is made available to the public. Compared to a registered Community design, an unregistered Community design is limited in its scope of protection and duration. Thus, if a design is intended to be used for more than three years, preference should be given to a registered Community design.

Alternatively, one can file applications for national registered designs. Following the enactment of the EU Designs Directive (98/71/EC), the different national design laws have been almost fully harmonised. Thus, in most cases, national regimes differ only in application by the national courts. However, one important issue that has not yet been harmonised is the protection of designs of spare parts of complex products (eg, cars). Germany and France provide design protection for certain spare parts, while other countries (eg, the United Kingdom, Spain, Italy and the Benelux countries) do not.

A party filing a national design application should consider the desired territorial scope of protection. If the design will be used in several member states, it may be advisable to seek a registered Community design, rather than multiple registered national designs.

Alternative forms of design protection

Companies may also consider filing a Community trademark application or one or more national trademark applications covering the 2D or 3D appearance of a design. This is particularly advisable if the design has already been published (ie, lacks novelty). According to the EU Community Trademark Regulation (207/2009), trademark registration is also available for the shape of the product and its packaging. In theory, additional trademark protection for the shape of a product can be obtained in every member state. In practice, the application of these rules depends on the respective national court. Recent case law suggests that EU courts intend to restrict trademark protection for the shapes of products in relation to design rights.

In most EU member states, designs may also be protected under copyright law. However, EU copyright law is only partially harmonised. Copyright protection of the shape of a product – which will most often qualify as a work of applied art – differs significantly from one member state to another. Obtaining copyright protection for a work of applied art is more difficult in some countries (eg, Germany and the United Kingdom) than others (eg, Austria and France).

If a product represents an invention, it can be protected by a national patent in addition to a design. In this case, the design protects the specific appearance of the product while the patent relates to its technical aspects. Such overlap is possible only if the design of the product has not been determined solely by its technical function and the designer had creative freedom to design purely aesthetic features. Due to the harmonisation of design laws, this requirement applies to all EU member states.

Unfair competition law can also contribute to the protection of designs, although it has been only partially harmonised in the European Union. Regarding protection against the slavish imitation of designs, the national legislature and courts will determine whether the imitation of a design amounts to an act of unfair competition. For example, in Germany, France and Austria, it is possible to use unfair competition law to act against product imitations. In the United Kingdom, a design can be protected under the principle of passing off, provided that the design is well known.

Protection of designs in Asia-Pacific

Asia-Pacific countries also offer differing levels of design protection using different forms of intellectual property.

Registration regimes – industrial designs

An industrial design registration regime exists in most Asia-Pacific countries. Broadly speaking, the requirements to qualify for such protection are worldwide novelty and industrial application. In some jurisdictions (eg, China, Taiwan, Thailand and Vietnam), design registration falls under patent registration and there may be an additional requirement of inventiveness. Most jurisdictions do not require substantive examination of designs (although exceptions include Australia, Taiwan, Thailand and Vietnam). In countries where no substantive examination occurs during registration, pre-filing searches will strengthen the design registration.

Most Asia-Pacific countries are members of the Paris Convention for the Protection of Industrial Property, meaning that a six-month priority claim may be available. However, only Japan and Singapore are members of the Hague Agreement. Due to the novelty requirement, an application for design registration must be filed before the product is commercially exposed or exploited. This may not be practical, since a decision to invest in design registration costs must be made before the commercial success or longevity of a product has been tested.

Alternative forms of design protection

Where it is impractical to incur the costs of design registration or the product has already been launched, other types of IP right that do not require registration may be available in Asia-Pacific countries. For example, copyright, passing-off (in common law countries) and unfair competition laws offer alternative protection for unregistered designs.

Most Asia-Pacific countries also allow for the registration of 3D trademarks. This offers the longest term of protection, in that trademark registration rights can be perpetual (subject to renewal and use). However, it is generally difficult to register 3D trademarks without an accompanying word mark or evidence of substantial use.

In many Asia-Pacific countries, if design registration is not sought, the only form of protection for unregistered designs (given the difficulty of registering 3D trademarks) is copyright, passing-off or unfair competition law. Naturally, such protection tends to come with greater uncertainty of proof, as it depends on robust record keeping. Also, such rights can be asserted only in contentious proceedings, which tend to be costly – particularly when compared to the low cost of design registration. Further, some countries (eg, Australia, Malaysia, Singapore and possibly Thailand), provide no copyright protection for industrially applied designs. In such countries, it is crucial to register a design to enjoy any sort of protection.

Design registration is still the most certain form of protection across the Asia-Pacific region, although it offers the shortest term of protection (generally ranging from 10 to 25 years). Registered design rights may be easier to enforce against infringers because infringement is made out as long as the rights holder can show that the appearance of the infringer’s article is similar to the registered design. Conversely, trademark infringement further requires the rights holder to prove a likelihood of confusion among consumers of the relevant goods – a highly fact-dependent inquiry. Similarly, copyright infringement requires proof of actual copying.

Protection of designs in the Americas

North and South American countries also protect designs using various types of intellectual property, with differing requirements and scopes of protection.

Protection regimes – registration versus substantive examination

Most countries in the Americas have a design registration system to protect the ornamental characteristics of a design. Registration of a design typically provides additional rights (eg, enhanced enforcement options). Certain countries provide no design protection for unregistered designs (eg, Argentina, Brazil, Canada and Mexico). To qualify for registration, an industrial design must generally have worldwide novelty and industrial (commercial) application.

Most American countries are members of the Paris Convention, meaning that a six-month priority claim may be available. However, only a few countries (including the United States) are members of the Hague Agreement. Due to the novelty requirement, an application for design registration must be filed before the product is commercialised. This may not be practical, as companies must often decide whether to register their designs before they can determine the likely commercial success of the products.

Generally, registration jurisdictions do not provide for substantive examination of designs (although optional examination may be requested in Brazil). Substantive examination may occur later if the rights holder attempts to enforce the design against an infringer. In countries without substantive examination during the registration process, pre-filing searches strengthen the design registration.

The term of a registered design ranges from five years (in Argentina) to 10 years (in Venezuela). Most countries provide for renewals of registered designs. Exceptions include Colombia and Mexico.

Unlike most American countries, the United States protects designs via design patents. Designs are subject to substantive examination and applications must comply with the other regulations governing US patent applications. Due to the rigorous substantive examination they undergo, US design patents are often considered stronger than design rights obtained in countries that use registration systems. Accordingly, US design patent prosecution tends to be more costly than design registration in other countries. A US design patent lasts 15 years from issuance, with no renewal.

An applicant must file a US design patent application within one year of the design being publicly disclosed and may claim priority to earlier-filed applications. Companies that have offered, sold or displayed products containing or embodying the design prior to the statutory bar date may have other options to protect those designs.

Alternative forms of design protection

Other forms of intellectual property that may protect designs in the Americas include trademarks and copyrights. For example, unregistered designs in Canada receive limited protection under trademark and copyright law. In the majority of American jurisdictions, one may claim trademark rights in the appearance of a product or its packaging if the design is distinctive as a source identifier of the product. Some countries protect 2D and 3D designs under trademark law (eg, Colombia, Mexico, Peru and Venezuela). Trademarks rights in designs may extend from 10 years with no renewal to perpetual terms (usually subject to continuous use acting as a source identifier of the goods). It is advisable to register designs as trademarks in countries with first-to-file systems, such as Brazil.

Copyright protection may also be available for the design of a useful article, where it is separate from the article’s functional aspects. Protection is available on creation or registration, depending on the country, with enhanced rights obtained on registration. Some countries do not provide copyright protection for works of applied art. The term of copyright protection generally lasts for the life of the author plus 50 to 100 years, depending on the country.

Other laws may be available to protect an unregistered design, including unfair competition law (Brazil) or passing-off law (Canada). As in other countries, such protection tends to come with greater uncertainty of proof. Further, it will typically be asserted in contentious proceedings, which tend to be costly.

Conclusion

Designs may be protected by multiple types of IP right. Depending on the jurisdiction and form of intellectual property, protection of designs may be available concurrently and consecutively. Companies should develop a global strategy to obtain the broadest protection of their designs in the most cost-effective manner. Companies should pay particular attention to the timing of disclosure or commercialisation of designs before filing appropriate applications in order to maximise the extent of IP rights protection. Companies should consult with counsel familiar with IP protection and enforcement in key jurisdictions in order to develop a strategy that maximises design protection under the many regimes present in jurisdictions around the world.

By Lisa H Meyerhoff,Angeline Leeand Frederike Kerl, Baker & McKenzie

This article first appeared in World Trademark Review. For further information please visit www.worldtrademarkreview.com.