Benelux (comprising Belgium, the Netherlands and Luxembourg) has unified law, meaning that it is possible to acquire design rights only for the three countries together.
Three types of design application are available in Benelux:
- a Benelux application, based on the Benelux Treaty for Intellectual Property and its Implementing Regulation (both dated October 1 2013);
- an EU application, based on the EU Community Design Regulation (6/2002) and the EU Community Design Implementing Regulation (2245/2002); or
- an international application, based on the Hague Agreement concerning the International Registration of Industrial Designs with respect to the Hague Act 1960 and the Geneva Act 1999.
Enforcement of a design right is possible based on the Benelux Treaty for Intellectual Property and the Community Design Regulation. The Hague Agreement is solely an agreement on the formal aspects of design prosecution.
The Benelux Treaty for Intellectual Property offers no protection to unregistered designs.
A design right protects the novel and external appearance of an industrial or handicraft item. The whole or part of the design may be protected. The appearance of the design is extracted from its characteristics (ie, the lines, contours, colours, shape, texture or materials of the product or its decoration).
The design should be made industrially or manually. Composite products, packaging, presentations, graphic symbols and letter types can be protected, but computer programs cannot.
Under Benelux design law, no protection can be sought for:
- characteristic features that are determined solely by their technical function; or
- characteristic features that must be reproduced in the same form and measures in order to combine the product mechanically or attach it to another product so that both products can fulfil their function.
If a design is applied to a composite product, the design is new and has individual character insofar as it is visible and insofar as such features are new and have individual character.
Individual character and novelty are assessed not during the registration procedure, but only in court when the design right is invoked. Consequently, a design will be registered if the formal requirements are met and it does not contravene public policy or morality. It is advisable to ascertain whether a design has individual character and novelty before filing.
A design shall be considered to have individual character if the overall impression that it gives to the informed user differs from that given to such user by any design made available to the public before the date on which the application for registration is filed or, if priority is claimed, the date of priority. In assessing individual character, the designer’s degree of freedom in developing the design shall be considered.
A design shall be deemed to be novel if no identical design has been made available to the public before the date on which the application for registration is filed or, if priority is claimed, the date of priority. Designs that differ in minor details are considered to be identical.
For the determination of novelty and individual character, a design is considered to have been made available to the public if it has been published following registration or otherwise, or exhibited, used in trade or disclosed before the design application was filed. If the sector concerned, operating in the European Union or the European Economic Area, could not reasonably have become aware of such publication in the normal course of business, the novelty is not damaged.
Further, if the design was made available to the public for the sole reason that it was disclosed to a third party under explicit or implicit conditions of confidentiality, its novelty is not damaged.
Disclosure also shall not be taken into consideration if the design was made available to the public by the designer, his or her successor in title or a third party as a result of information provided or action taken by the designer or his or her successor in title during the 12-month period preceding the date of filing of the application or, if priority is claimed, the date of priority.
In short, under the Benelux design system, ‘novelty’ means relative novelty.
The Benelux design registration system is a deposit system, meaning that a design registration will be issued once the formal requirements are met. Although there is an examination as to whether the design may contravene public policy or morality, this rarely leads to refusal. The value of the Benelux deposit system has increased since electronic filing became operational on January 27 2014. Previously, only hard-copy applications were possible.
An application for design registration can be filed at the Benelux Office for Intellectual Property (BOIP) in The Hague, the national IP office in Belgium or Luxembourg or electronically via the BOIP website.
An application may be filed in Dutch or French – the languages of the territory – but also in English (since December 1 2013).
Requirements for filing
Each application may include multiple designs, up to a maximum of 50. A multiple design application is better value, as the fee per design decreases the more designs are included.
The design application must contain the following:
- the name and address of the applicant – any natural person or legal entity may file a design application, regardless of nationality. However, for prosecution reasons BOIP requires an address for correspondence in the European Economic Area. The applicant need not have a relationship with the designer or creator of the design;
- representation of the design – the representation should be graphical (either drawings or photographs). There is no requirement regarding the number of representations of the design, provided that the characteristic features are demonstrated;
- a statement of the product containing the design or model – this may be given in words, or a Locarno classification code is sufficient;
- a description of the colour(s) of the design, if necessary, together with the corresponding colour code; and
- the signature of the applicant or its representative – with respect to electronic filing via an agent, no signature is necessary because the application is be filed via an online system, thus the applicant is already known to the authority.
The application may contain a description of no more than 150 words of the distinctive characteristics of the new appearance of the product and the name of the actual designer. Further, it may contain a request to defer publication of the registration. The deferral request must be made when filing the application. The request must reflect all designs in the application. The applicant can end the deferral at any time. The deferral applies for a maximum of 12 months from the date of application or the date of the invoked priority right, but may be requested for a shorter period. Once the deferral period ends, the applicant may request publication of only some of the designs.
A priority claim must be made when filing the application or within one month of filing. The priority claim must indicate the country, the date of first application, the application number and the design applicant, and include a copy of the original design application. If the claim is made within one month of application, a declaration containing the same details must be filed.
If the owner of the design for which priority is claimed is different from the owner of the Benelux design application, a declaration of assignment of the priority right must be included in the priority claim.
The applicable fees need not be paid to obtain a filing date. However, payment must be made within one month of the application date.
The fees consist of a filing fee per design and a publication fee per design per view. The filing fee is €108 for the first design and €54for the second. The publication fee per view is €10.
The whole procedure can be concluded in approximately three months. Although BOIP frequently sends notifications of deficiencies, in most cases it is simple to comply with its request.
Protection lasts for five years (renewable five times).
BOIP examines only on formal requirements and to determine whether the design may contravene public policy or morality. In such case, BOIP will suspend the registration and request the applicant to withdraw the design application within two months. If the application is not withdrawn, BOIP will ask the public prosecutor to start a nullification action against the application. If the public prosecutor does not start a nullification action or a court rules that the design can be registered, BOIP will publish and register the design.
Opposition and nullification
A design application cannot be opposed following publication, as under trademark law. Nevertheless, the Benelux Treaty for Intellectual Property allows a design to be claimed if it is registered by a party that is not the original creator. Claiming a design must be done before the court and such a claim can be started only by the original creator. This can be done at any time up to five years following the date of publication of the design. Nullification of the design registration can be invoked by the original creator at any time.
A nullification action against a design can be invoked by interested parties before the court.
A design may be assigned. The assignment must be in writing and must concern the whole Benelux territory. In order to invoke a change of ownership against third parties, the assignment should be recorded in the Benelux Design Register.
An assignment of a design registration automatically implies the assignment of the copyrights involved in the design.
The Benelux Treaty for Intellectual Property allows for the licensing of a design right. In order to invoke a licence against third parties, the licence should be recorded in the Benelux Design Register.
If the licensee has acquired a right to damages through the licence contract, it may intervene in a pending court case against an infringer to claim damages or part of the profits earned. If it has acquired this right in the licence contract, the licensee may claim this independently from the licensor.
The Benelux Treaty for Intellectual Property empowers a design owner to enforce its right against the use of the design by a third party.
Remedies which can be requested include a prohibition on using the design and damages. In principle, these remedies are applicable throughout the whole Benelux territory.
In order for a design owner to enforce its rights by requesting a prohibition on use and damages, a third party must use the owner’s product or a product in which its design is incorporated, provided that the design has an identical appearance or produces a similar overall impression on the informed user. The creator’s freedom of creation must be taken into account in this regard. However, the test of whether there is infringement must be assessed from the perspective of the informed user.
If the infringement took place after publication of the design, the design owner can request damages. It can also request that:
- profits made from the infringement be transferred to it;
- infringing products and any products used to produce these products be destroyed; and/or
- infringing products be recalled.
The duration of enforcement actions depends on the urgency of the issue. In urgent matters, preliminary relief proceedings can be used, which can take between two weeks and two months, although in extremely urgent cases they may take just a couple of days. For non-urgent cases there are proceedings on the merits, which can take up to two years.
The EU Community Design Regulation protects unregistered designs for three years. As this regulation has effect in Benelux, an unregistered Community design is protected in the jurisdiction.
Visible external appearances that do not consist of features which are solely functional and are laid down in a patent may simultaneously be filed as a design.
Trademarks can be protected if they have distinctive character and consist of a sign which can be represented graphically. A design must be new, while a trademark need not be new.
In many cases protection of a product (either its shape or packaging), lettering or logo can be sought under both design law and trademark law. It is important to have a clear picture of the benefits in both cases.
Copyright gives the maker of a work the right to prohibit the use, publication or reproduction of the work, provided that the work has individual character and bears the personal stamp of the maker
No registration is needed for copyright protection, in comparison to designs. On the other hand, copyrights have a higher protection threshold and are limited to one country, and therefore not the whole Benelux territory.
The theory of slavish copying prohibits copying if there is a likelihood of confusion.
Criminal law can also provide design protection – for example, in the case of counterfeiting, which could be considered a crime. However, the public prosecutor is not active in such cases, so the design owner should seek a remedy under other laws.
Melissa Moncada Castillo
This article first appeared in World Trademark Review. For further information please visit www.worldtrademarkreview.com.