Benelux design law is governed by the Benelux Convention on Intellectual Property, the current version of which entered into force on October 1 2013. The convention replaced the Benelux Design Law 1975, which was the first law providing uniform design protection in multiple EU member states and was heralded as such in the preamble of the EU Community Design Regulation.
The Community Design Regulation (December 12 2001, as amended by EU Regulation 1891/2006) is the second important piece of legislation for design law in the Benelux countries.
As both the convention and the Community Design Regulation are necessarily in line with the EU Design Directive (98/71/EC), they are similar in their material aspects and provide similar rights. Since the introduction of the registered Community design, many applicants have therefore elected to file for a Community design as opposed to a Benelux design registration covering only Belgium, the Netherlands and Luxembourg.
Finally, the EU IP Enforcement Directive (2004/48/EC), which provides specific remedies for IP rights infringement, has been implemented in the national laws of the Benelux countries.
The Benelux Convention on Intellectual Property does not provide for protection of unregistered designs. However, the EU Design Regulation does, which means that all operators in Benelux can benefit from three years of unregistered design protection. In order to qualify for such protection, the relevant design must have become known to the EU public. Any prior publication outside the European Union may destroy the design’s novelty, provided that such publication could reasonably have become known to the relevant circles within the European Union. For foreign applicants, this is generally a motivating factor in filing for registered design protection, the costs of which are fairly low.
Copyright law, unfair competition and even trademark protection may also come into play when it comes to the protection of the appearance of products and their parts.
The legal definition of a ‘design’ in Benelux is quite broad. A design can consist of the appearance of a product or part of a product, defined by its lines, contours, colours, shape, texture or materials, or of its ornamentation.
In order to be protectable, the design must be novel and have individual character. Novelty is relatively easy to assess: a design is regarded as novel if, on the filing or priority date, no identical design has been disclosed to the public. Designs are regarded as identical when their characteristics differ only in insignificant details. There is a 12-month grace period, meaning that novelty is not destroyed if the design was disclosed by its creator in the 12 months preceding the application. Nevertheless, it is strongly recommended to file for design protection before publication, especially if the applicant is also contemplating applying for design protection abroad.
A design is regarded as having individual character if the overall impression which it produces on the informed user differs from that produced by existing designs. In assessing this, the creator’s degree of freedom must be taken into account. If the designer has little freedom (eg, because the design is strongly dictated by technical requirements), the scope of protection will be limited.
Design law has also introduced the concept of the ‘informed user’. The informed user is defined as particularly observant and having some awareness of the state of the prior art in the design field. The informed user is commonly seen as being more observant than the average consumer (as known in trademark law), but less observant than the person skilled in the art (as known in patent law).
There are two important exceptions to what can be protected as a design. The following are ineligible for design registration:
- characteristics of a product that are dictated exclusively by its technical function; and
- characteristics of a product which must be reproduced in an exact form and specific dimensions in order to permit the product into which the design is incorporated or to which it is applied to be mechanically connected to or placed in, around or against another product so that either product may perform its function (the ‘must-fit’ exception).
The convention stipulates that a design applied to a product or incorporated into a product which constitutes part of a complex product (ie, a spare part) is regarded as novel and having individual character only insofar as that part – once incorporated into the complex product – remains visible during normal use of the product. In other words, products or parts that are found under the bonnet of a car or inside a machine and are thus not usually visible during normal operation of the machine are ineligible for design protection. As mentioned above, products that must be reproduced in an exact form and connected to another product so that either product may perform its function are also ineligible for design protection.
Who can apply?
As a rule, anyone can apply for Benelux (and EU) design protection. Representation by a representative established in the European Union is required when an office action is issued.
The cost to obtain a Benelux design registration is usually around €600 to €700 (excluding value added tax (VAT)). The cost to obtain a registered Community design is slightly higher – usually around €800 to €1,000 (excluding VAT). However, with the introduction of electronic filing, filing costs in Benelux may decrease somewhat.
In Benelux as well as the European Union, multiple design applications are possible. For registered Community designs, multiple applications must belong to the same (sub)class. This restriction does not apply to Benelux designs and any combination of products can be filed in one multiple design application.
The Benelux Office for Intellectual Property (BOIP) maintains the Benelux Design Register. The BOIP provides a useful search tool, which can be accessed at https://register.boip.int/designsOnlineWeb/?l=en. The BOIP does not carry out an examination on relative grounds. Objections can be made only if a design is considered to be contrary to public order or morality, which (the Netherlands being quite liberal) is rarely the case.
The same applies to the procedure for registered Community design applications handled by the EU Intellectual Property Office (EUIPO). If the formalities are in order, a Community design registration can be obtained in as little as 48 hours. However, if so desired, publication of the Community design can be deferred until 30 months after the application date or earlier priority date. This is considered to be a useful feature of the EU design system by companies that are active in, for example, the furniture and automotive industries.
For Benelux designs, publication can be deferred for up to 12 months.
Electronic filing is available in Benelux as well as with the EUIPO, and is strongly promoted.
Neither the BOIP nor the EUIPO provides for opposition against design applications. For registered Community designs, a cancellation action can be brought before the EUIPO or, alternatively, a case can be brought before one of the designated Community design courts.
Cancellation of a Benelux design registration can be obtained only through the courts.
Designs created during employment
Unless specifically agreed otherwise, if a design has been created by an employee in the course of his or her employment, the employer will be regarded as the creator. Similarly, if a design has been created on commission, the commissioning party will be regarded as the creator, provided that the commission was given with a view to commercial or industrial use of the product into which the design is incorporated.
The rights holder can take legal action against the sale or manufacture of any design that infringes its design, in the sense that it creates a similar overall impression on the informed user.
Legal action must be taken through the court, as the BOIP has no authority over infringement of design rights. However, a demand for a claim can be entered in the BOIP register at the claimant’s request, as a warning to third parties that a demand has been submitted to the court.
Aside from an injunction, the most important available remedies are penalties and damages claims. The Benelux Convention on Intellectual Property also provides for the possibility to request a transfer of the profits made as a result of the infringement. In addition, the rights holder can request the recall or destruction of the infringing goods and the equipment used to produce them.
Generally speaking, three different courses of action are available to the rights holder:
- A request can be filed with the court for an ex parte order with a view to precautionary seizure of goods that are suspected of infringing the rights holder’s design. The ex parte order is usually granted almost immediately. In practice, the court may contact the claimant in order to obtain more information and indicate whether the ex parte order will likely be granted.
- Preliminary relief proceedings are available, through which an injunction can be obtained. Compensation for damages cannot be requested in these proceedings. While the courts can handle such cases on very short notice, a decision is normally rendered within two weeks.
- In non-urgent matters and cases where compensation for damages is sought, proceedings on the merits can be initiated. Such proceedings usually take between one and two years.
Case law highlights
The past year has seen several interesting design law cases.
The Netherlands is famous for its modern design, as well as for its rainy weather. This combination led to the creation of the Senz storm umbrella, an umbrella with an asymmetrical shape that “floats on the wind”, as opposed to being blown away by it, together with its owner (see Figure 1). Senz came into conflict with Impliva, which also sells an asymmetrical storm umbrella (see Figure 2). After a legal battle that lasted nearly a decade, in May 2016 the Court of The Hague ruled that the design of Impliva’s newest umbrellas was primarily dictated by its technical characteristics. For the remainder, the design features were sufficiently different from those of Senz.
Figure 1: Senz umbrella
Figure 2: Impliva umbrella
An equally interesting case was decided – for now – by the Appeal Court of The Hague in a case involving inflatable lounge chairs. The original claimant was Marijn Oomen, a Dutch designer who designed the LAMZAC inflatable lounge chair. Oomen filed for registered Community design protection (and subsequently assigned the rights to Fatboy, a well-known Dutch design company; see Figure 3).
Figure 3: LAMZAC/Fatboy inflatable lounge chair
Approximately one year after Oomen filed for the Community design, Massive Air was established as a company with the purpose of selling inflatable lounge chairs under the KAISR brand. Through crowdfunding website Indiegogo, Massive Air amassed a large following and substantial funding; by July 2016 it had received donations of more than $4 million (see Figure 4).
Figure 4: KAISR crowdfunding website
Unfortunately for Massive Air, the Court of The Hague ruled at first instance and on appeal that the KAISR lounge chair infringed the design rights of Oomen/Fatboy. At the time of writing, the Indiegogo website states that the Dutch KAISR chair is unavailable in the European Union and that no orders from EU customers are accepted.
Ownership changes and rights transfers
Recordation of ownership changes, licences and liens with the BOIP is efficient and straightforward. A copy of the deed of assignment will usually suffice. For recordation of a licence, lien or limitation, the executed power of attorney of all parties concerned is required. Again, a copy of the document will usually suffice.
Interestingly, Article 3.28 of the Benelux Convention on Intellectual Property stipulates that authorisation given by the creator of a work protected by copyright to a third party to file a design for that work of art will imply the assignment of the copyright attached to that work. Assignment of the copyright relating to a design will result in the assignment of the rights to the design and vice versa. This is a little-known clause in Benelux design law and must be considered during the process of assignment of IP portfolios.
Historically, the Dutch and Belgian copyright laws have provided useful added protection for designs and the scope of protection under both laws is by no means limited to artistic works. The Dutch Copyright Act in particular is considered to have a very low threshold of protection.
Another layer of protection is added by the various national laws against unfair competition. In the Netherlands, for example, slavish imitation may be considered a form of tort. However, as a rule, a claim of unfair competition will require additional circumstances and slavish imitation is therefore commonly claimed only in conjunction with a claim of infringement of other IP rights.
Finally, in Benelux a design may also be eligible for trademark protection. However, in recent years the courts and the BOIP, following European Court of Justice guidance, have become increasingly reluctant to allow protection of three-dimensional marks. It is generally recommended to obtain registered design protection if a design is still novel (ie, if it has not been made available to the public in the European Union more than 12 months before the application for registration).
Prof JH Bavincklaan 2
Amstelveen 1183 AT
Tel +31 20 223 88 04
Fax +31 20 223 87 81
Peter van der Wees
Peter van der Wees is a founding partner of Signify. He studied law at Leiden University and trained at one of the Netherlands’ largest patent and trademark firms. Having qualified as a Benelux and subsequently a European trademark and design attorney, he became a partner at an Amsterdam-based trademark firm. He is a guest lecturer at the University of Amsterdam. His further teaching experience includes tutorships at the Dutch Bar Association education programme and the professional training programme for Benelux trademark and design attorneys.
This article first appeared in Designs 2017: A Global Guide. For further information please visit www.worldtrademarkreview.com.