Design law - Designrecht
December 16, 2022
What is design law?
In addition to IP (intellectual property) or copyright and trademark protection, it is also possible to protect creative achievements according to the principles of design law. In this respect, the design law is decisive (DesignG). Design protection comes into consideration when it is a matter of protecting the aesthetic design form of a product. For example, the design of furniture, logos, fabric samples, jewellery, but also of car rims, perfume bottles and many other objects can fall under the protection of design law. This is relevant because mere ideas do not enjoy legal protection. Unusual designs can serve as image carriers and influence consumers' purchasing decisions, so they certainly have an economic value. It may therefore be advisable to protect the self-created design extensively and thus also to be able to take action against imitations or other infringements by competitors. Whether this makes sense must always be clarified in each individual case, whereby the economic dimension should be paramount.
What exactly can be protected under design law?
All two-dimensional or three-dimensional manifestations of a whole product or a part thereof are eligible for protection under design law. Any industrial or handicraft object is considered a product. This also includes packaging, equipment and lettering. Individual parts which can be assembled to form a complex product can also be protected. However, the protection of designs of human parts, animals and plants is excluded. Also excluded in principle is the protection of appearance features of products which fulfil exclusively a technical function, since in this respect primarily the protection by patent law is to be applied. In this respect, however, it depends on whether there is sufficient scope in the design of the functions, which was also concretely exploited . If this is the case, the product may also be eligible for protection under design law despite technically predetermined features.
For the design of a product to be eligible for protection under design law, it must be new. A design is new if no identical design has been disclosed before the filing date. In order to assess novelty, the own design is compared to already known designs. It is important to note here that the premature publication of one's own design can also be detrimental to novelty and could thus prevent one's own application. Although there is a grace period of 6 months during which the application can still be filed after publication of the own design. To be on the safe side the own design should first be applied for and then published.
Furthermore, the design of the product must have a certain individual character. This is the case if the overall impression created by the design differs from the overall impression created by another design that has already been published. This is based on the overall impression of an "informed user", a fictitious person who is familiar with the class of goods to which the respective design belongs and who is reasonably observant. In order to fulfil the requirement of individual character, the informed user must not experience a déjà vu effect when viewing the design.
How does one obtain protection under design law?
In order to obtain protection under design law on the German market, an application must be filed at the German Patent and Trademark Office (DPMA), which at best results in a successful registration in the Design Register of the DPMA.
When filing the application, particular attention should be paid to the visual representation of the design, because the design will be protected as it can be seen in the submitted illustrations. Anything that is not visible in the illustrations is not covered by design protection.
Furthermore, the choice of the class of goods to which the product belongs should be made carefully (so-called product indication). Although this selection does not influence the scope of protection of the design, it serves to determine the standard of comparison. It is possible to select several products from the official list of goods for registered designs. The choice is determined by the submitted illustration. If the design shows a logo, for example, the product indication should be "logo" or "graphic symbol", but not "T-shirt" or "mug".
The registered design is protected for an initial period of 5 years from the date of application, which can be extended four times, i.e. up to 25 years in total.
Scope of protection of the registered design - How can I take action against an infringement of my design right?
The registered design grants the owner the exclusive right to use the design and the possibility to prohibit third parties from using it. Therefore only the owner has the right to put the design on the market, to grant licences or to sell the design right. In the case of unauthorised use of the registered design by a third party, the owner has the right to obtain information about the type and extent of the use and, if applicable, the advantages gained from it, and the possibility to claim damages, in addition to the right to cease and desist. In this respect, it is also irrelevant whether the infringement of the design right was deliberate. In principle, it is also possible to take action against independent parallel creations on the basis of the registered design.
Of course, this only applies if the design is actually the protected design or if elements are substantially the same. In this respect, it is not a question of identity, but of whether the "informed user" is given the same overall impression. This can be highly contentious in individual cases.
Design protection at the international level
In addition to national law, there is the possibility of registering a design for the European and worldwide scope.
At the European level, this is referred to not as a design, but as a European Community design. However, there are no differences in the requirements for protection. Thus, for successful protection at the European level, the design must be a new and original product.
At the European level, however, a distinction is made between the registered and the unregistered Community design with regard to obtaining protection:
The registered Community design obtains its protective effect through a successful registration in the register of the EUIPO. This is preceded by an application to the EUIPO, which is similar to the application to the DPMA. The scope of protection of the registered Community design largely corresponds to that of the registered design and, like the registered design, the registered Community design enjoys a term of protection of initially 5 years from the filing of the application, which can be renewed four times, i.e. up to 25 years in total.
The unregistered Community design obtains protection by so-called "disclosure" to the Community, i.e. by giving the possibility of knowledge. Entry in a register or other formalities are not required, as the name suggests. However, the time of disclosure should be precisely documented, as protection begins at this point. In the event of a dispute, this point in time is decisive and must be proven by the proprietor. The unregistered Community design has only a so-called relative protective effect: although it protects against deliberate imitations, which must also be proved by the holder, it does not protect against unconscious parallel developments. Moreover, the unregistered design enjoys a term of protection of only 3 years from the date of disclosure. An extension is not possible. In this respect, the protection afforded by an unregistered Community design is relatively low.
Finally, an international design can be applied for at WIPO for selected countries.
Comparison Trademark Law - Design Law - IP Law
The creative work is finished, and the question arises now how to protect oneself legally. Which protection system offers the best possible and most comprehensive, but also the most economically sensible protection? An achievement can be protected in several ways. For example, a graphically designed logo can be applied for registration as a figurative mark as well as a design and, if it has a sufficient level of creation, it is automatically also protected by copyright.
We will explain the most important key points of the different systems, which can provide initial assistance in classifying them.
What is protected?
The identification of goods and services as belonging to a company/manufacturer usually by means of a term/slogan consisting of words, letters or numbers (word mark, "Apple"), logos (figurative mark, the Apple apple), special design of terms (word/figurative mark, "Coca Cola" logo) as well as colour marks, sound marks etc.
The aesthetic design of products of a two- or three-dimensional nature in terms of colour, shape and structure (e.g. furniture, fabric samples, jewellery, logos, wallpaper).
Any personal intellectual creation as the work of its creator (e.g. works of painting, literature, photography, film, etc.).
- Absolute requirements for the sign:
Representability of the sign as well as distinctiveness, suitability as indication of origin, no infringement of requirement of availability (examination by the Office);
- relative requirements:
No successful opposition by the proprietor of an identical or similar trademark (examination only in case of opposition by other trademark owner).
Novelty (if no identical design has been published before filing date) and individual character (if design differs in its overall impression from already known designs) of the design of the product.
The work must have come into being through human creativity, whereby it must be a personal intellectual creation that has a certain degree of individuality and creativity that stands out from everyday design (so-called "level of creation").
Creation of protection
By registration in the trademark register at the DPMA/EUIPO/WIPO or by extensive use in the course of trade and obtaining a reputation (so-called "trademark acquired by use").
By registration in the Design Register at the DPMA/ EUIPO/ WIPO or disclosure at EU level (so-called unregistered Community design)
Formless creation at the moment of creation by the author
Duration of protection
As a rule, initially 10 years from application for registration. Before expiry of the term, the registered trademark can be renewed as often as desired against payment of a fee.
As a rule, initially 5 years from the date of application for registration, with an option to extend to a maximum of 25 years.
Up to 70 years after the death of the author.
Transfer possible; note: in the case of designs created in the course of employment or on commission, the employer/principal is deemed to be the beneficiary if the design was the subject matter of the underlying contract. However, the right to be named as inventor applies.
The capacity as author, the so-called moral right, is not transferable. However, the author can transfer various rights of use and ancillary copyrights to third parties.
- Publicity and evidential value through entry in the register;
- Business value, which can be sold;
- No expiry of protection with regular renewal.
- Publicity and evidential value through entry in the register;
- Enterprise value which can be sold;
- Relatively low requirements for assumption of protectability
- automatic creation without formalities or costs
- comprehensive and strong protection
- The Office only examines the relative grounds for refusal. Even after registration, there is still the possibility that another trademark proprietor may file an opposition.
- Fees are charged for registration
- Term of protection limited to 25 years
- The Office only examines the formal requirements, but not whether the requirements of novelty and individual character are fulfilled. Even after registration, the possibility of a claim for design infringement by the owner of a similar design remains.
- Fees are charged for registration
- Legal uncertainty: Whether a work has the necessary level of creation to be protected by copyright cannot be determined with certainty in advance but must ultimately be examined by a court in the event of a dispute.
- Difficulties of proof: Authorship and time of creation must be proven in the event of a dispute
- Advice on the appropriate legal and protection system
- Examination of protectability
- Application to the DPMA