In the fourth and last part of his thought leadership series on intellectual property, Ludwig Lindermayer, a patent and trademark attorney at PAUSTIAN & PARTNER, discusses design basics and how startups can protect their brand.
While our previous sessions delved into IP and trademarks, which reside on the more "creative side" of IP, this article focuses on the protective right that safeguards creativity: design.
A design primarily safeguards the visual appearance of a product, exclusively in cases where the shape serves no technical purpose. For instance, if a curved surface on a product is essential for its technical function, such as facilitating rolling, it cannot be protected and falls outside the purview of design rights. Conversely, if the curved surface exists purely for aesthetic reasons, it can be protected.
In a nutshell, if your vase closely resembles a toaster that is protected by design, your vase would likely infringe upon that design.
Naturally, the matter is not as straightforward as it may seem (as is often the case with IP). Various complexities come into play. If a product incorporates shapes necessary to fit another product, those shapes are not eligible for protection. An example would be a car fender, which must possess a specific shape to align with the rest of the vehicle.
Conversely, protecting only a specific part of a product is possible. Suppose a design feature repeats itself across different products, even if they do not appear identical. In that case, protecting that feature (and potentially applying for a trademark) is still possible. Regarding protective rights, designs exhibit a blend of patent and trademark characteristics in terms of their formalities. They must be novel and possess individual character, much like a patent must be both novel and inventive. With these formal requirements comes a vital point—like patents—you must not disclose your design before applying. However, the design requirements are generally (depending on the jurisdiction) less stringent, often allowing a grace period after your disclosure to apply for design protection without encountering issues. If there has never been a design like yours, it is considered novel. Designs with only minor differences are still considered identical. The individual character refers to the overall impression conveyed by your design compared to other designs. As you may have guessed, this becomes subjective, with different jurisdictions applying varying criteria. Since there is no substantial examination process (as with patents), these questions are typically addressed during an infringement case or if someone challenges your design.
In a nutshell, if your vase closely resembles a toaster that is protected by design, your vase would likely infringe upon that design.
Designs are also classified using the Locarno Classification, a system named after the beautiful town of Locarno (akin to the Nice Classification for trademarks). You must determine the category in which your product falls and indicate the corresponding class. However, this classification does not limit the scope of your protection, as illustrated by the example of the vase and toaster.
When you wish to protect multiple variations of the same product, the respective office (e.g., the EUIPO) often provides an application system wherein subsequent applications for variations are less expensive. Take advantage of this additional layer of protection.
Designs are often overlooked and not considered when formulating a protection strategy.
If you intend to file a design application yourself (which is feasible), it is advisable to provide several views in the form of black-and-white line drawings. Include only what is necessary and avoid any additional elements, as they will also be protected and must be considered when assessing infringement. A common pitfall is using a picture from a catalogue where numerous other decorative items are also present. While photographs are permissible, they should solely showcase the product, without any extraneous elements, and be presented in black and white (unless a colour is integral to the design).
Designs are often overlooked and not considered when formulating a protection strategy. However, to some extent, nearly every product is designed to be visually appealing. This applies even to technically focused products, albeit to a lesser extent, and is particularly crucial for products that attract potential clients. Since design protection is relatively affordable, given the absence of a substantial examination process, it should never be neglected, as it holds considerable power.
For more detailed information on designs, I recommend visiting the well-crafted website of the European Union Intellectual Property Office (EUIPO): https://euipo.europa.eu/ohimportal/en/web/guest/designs.
This concludes our informative journey through the IP rabbit hole. If any lingering questions remain, please do not hesitate to reach out.