Today, linear economies are giving way to circular and creative economies catalysed by design. Ethical, efficient and sustainable practices have manifested thanks to design. It is venturing into areas that were unthinkable a decade ago. Be it gaming technology, communication design and a host of other streams that give impetus to business the world over.

So, No matter how innovative, technologically advanced and developed your product is, it doesn’t assure you a win in a landscape of products, services and it doesn’t help you be competitive and successful. Market is flooded with similar products, and what differentiates your product from others is your product design.  Your product or service has to be appealable, interesting visually, tactile- to attract attention of costumers, meet their needs and fulfil their desires.  

Some of the best examples where innovation through design has had an impact can be seen in the leaps that companies like Apple, IDEO, Frog Design, Ikea, Airbnb and Netflix have made-of course, they protected it!.

Industry 4.0. is actually all about design.

Your business should really consider how to design products and services and invest smart in design. This can be a big game changer in never-ending competitive business wars in pursuit for success and recognition.

It is very important to make your product or service easily recognizable.  That is where design takes place.  Idea, function meets form. You are able to create distinct identity through industrial design and trademarks. ‘’A design consists of the visual ornamental characteristics embodied in, or applied to, an article of manufacture. Since a design is manifested in appearance, the subject matter of a design (patent) application may relate to the configuration or shape of an article, to the surface ornamentation applied to an article, or to the combination of configuration and surface ornamentation.’’ (USPTO). Design protection is especially beneficial for large manufacturers such as Lego or Apple, or companies that sell products in sets (e.g. furniture). Industrial design (referred to as a design patent in the United States) in legal sense, consists of ornamental or aesthetic aspect of an article. It may consist of shape, or two-dimensional features, such as colour, lines, patter-it can be packaging, web page, interior design, application set up…..  Whether the company seeks protection at national, reginal or international level it is important to find out already registered designs in the countries of interest. You want to do it right away? Great, you can choose different databases by National IP Offices. Or visit Designview, an European database, the largest consultation tool for designs presented by the European Union Intellectual Property, based on data of the registers of the participating National Offices, the WIPO and EUIPO. Finding out which designs are already registered also helps you to analyse your competitors, market trends, rejected designs, …

What can be protected?

A variety of products can be protected, both industrial and handicraft, they can be sets of products or complex products, important is that the product has individual nature, that it is original and novel. Some examples of products: Logos, packaging, maps, jewellery, vehicles, electrical devices, textiles, graphic symbols, drawings, artistic works, websites, application set up, icons, interior design..

How can you protect the design?

In Europe, design protection can be acquired through national registration, Community design registration or through international system for registration of Industrial Design (The Hague system). U.S. Design Patent is similar to the European Community Design.  According to the Slovenian Industrial Property Act, an industrial design means the outward appearance of the whole or a part of a product, resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or material of the product itself and/or its ornamentation and protects the external protection of a product. (http://www.uil-sipo.si/sipo/activities/industrial-designs/). Patents on the other hand can be granted for new inventive technical solutions and protect technical features.

The industrial design right, prevents others from applying, making, importing, selling the produced design to commercial products usually for a period of 10-25 years.  EU legislation includes also unregistered design protection, which lasts for three years after the design is made public and protects only against deliberate copying.

Overlapping between different protections

It is common to have more than one type of protection. A range of IP can be used to protect the same product.  For example, a bottle of Coca- Cola. So, the brand Coca- Cola is a trademark. Formula for the soda is a trade secret, packaging art is protected by copyright, while the shape and visual appearance of a bottle is protected by a design patent and a trademark (i.e.trade dress and trademarks). Trade dress includes product configuration and product packaging trademarks.

What is a good design?

The very best examples of industrial design are both highly appealing and functional, which makes products desirable. Take for example Coca- Cola contour bottle that dates back to 1915. Designer Earl R. Dean was unable to find any good image of Kola nut or coca leaf, instead he used an image of cocoa pod, leading to this ribbed bottle shape we all know very well and absolutely adore. Or the world’s most iconic iPod devices created by Sir Jonathan Ive. Or 1950’s high-end furniture, legendary Eames Lounge Chair, so stylish and comfortable it makes you fall in love with its elegancy right away. In a legal sense product must be reproducible by industrial means, it has to be original, useful, unique, appealing to the eye to be recognized as a good and registrable design. As far as success is concerned, it is also important to customize products in order to target different customers, have interesting marketing strategy and develop brand image, which will relate product to the company!

                                          

https://en.wikipedia.org/wiki/Earl_R._Dean#/media/File:1915_contour_Coca-Cola_contour_bottle_prototype.png

                

Interested in protecting the design in US ?

In the United Stated protection of the design can be granted by design patent, copyrights, trade dress and utility patents.

Design patents are filed with United States Patent and Trademark Office (USPTO). It provides protection for the ornamental design of an article of manufacture. A design patent gives the owner exclusive rights to make, use, sell, offer for sale and import the design in the United States. A design patent protects only the visual design aspects of a product, not its underlying functionality, such in a case of utility model. However, it has to have underlying functionality. The design also has to be unique, original and new. In an application it has to be demonstrated that specific design is crucial for function of an item. There are certain drawing standards that have to be met when filing, so it is crucial to meet those standards right away, otherwise an application will be rejected. It takes about 15-18 months from filing to get an application approved. Design patent protection is the IP right of choice for most industrial designs.  However, they are weaker than utility protection, do not relay only on design patent to protect your invention, because they do not protect mechanism, function, interior workings of an item, only exterior.

Registered Community Design (RCD) in Europe?

To obtain it you have to file a formal application at the European Union Intellectual Property Office.

‘’Holders of a Registered Community Design (RCD) have exclusive rights to use the design and to prevent any third party from using it anywhere within the European Union. The rights cover, in particular, the making, offering, marketing, importing, exporting or use of a product in which the design is incorporated or to which it is applied, or holding stock of such a product for those purposes. The design patent Europe protects against both imitations and the development of an identical or similar design by third parties.

A European design patent is initially valid for 5 years from the date of filing and can be renewed in periods of five years up to a maximum of 25 years.’’ (EUIPO, https://euipo.europa.eu/)

Design patent vs. trademark in US

Trademark registration protects words, symbols, name, logo that is utilised in commerce to distinguish one product or source of goods/services from other products or services. Trademarks can also be shapes, sounds or a gesture, but that is very difficult to register. It helps to identify the source of a product or service. Every trademark has to be firstly associated with at least one particular product or service. It for example shape, pattern, visual appearance of the item is dictated by its function, which gives value to the product, then this kind of item cannot be protected by trademark but it can be registered as design. Design patents protect the ornamental appearance of a unique design applied to the product. Design patents require registration with USPTO.  Design patents must also be tied to a product, also known as an article of manufacture (Lin V.)

As far as infringement is considered, design infringement is analysed and proven through process of side-by side comparison of the patented design and accused design. Trademark infringement requires a finding of likelihood that costumers could confuse between two marks and relate certain trademark to wrong company.

‘’In United States, the term of a design patent is 15 years from the issue date. A trademark, on the other hand, has no expiration date so long as the owner continues to use the mark on the pertinent goods or services. A trademark can be abandoned by failure to use the mark with an intent not to resume usage. ‘’ In Europe design it is valid for 5 years from the date of filing, it can be renewed every 5 years to maximum of 25 years.

 Usually company’s logo is protected as trademark registration, however you can strengthen the protection by registering logo as an industrial design. Trademark is protected as a whole, that means for example if competitors use similar graphic sign to yours and add a different word or something else, this will not be recognised as violated trademark protection. You can protect logo of a company as a Community design, to intervene where trademark protection is not valid.

In conclusion:

1.Protection is fast and economical

2.Especially in the Industry 4.0. Industrial design can be a very important element of company’s brand; it also increases the market value of the company and its products. Good design straightens the brand, and helps to gain or maintain reputation of a company

3.  Protection provides exclusive rights, so others cannot exploit or distribute your industrial design

4. Protection provides you with an opportunity to license or sell industrial design to another enterprise, which means you gain another source of income.

So, think about desing in your market and use it as a tool for innovation-but also, protect it.

Pagenberg B., 2018. European Union: Design Protection in Europe. Mondaq.com

http://www.mondaq.com/germany/x/727850/Trademark/Design+Protection+in+Europe

 WIPO: World Intellectual Property Organization. Industrial Design.

https://www.wipo.int/designs/en/faq_industrialdesigns.html#accordion__collapse__01

European IP Helpdesk. Designview- The Online Consultation Tool for Designs.

http://www.iprhelpdesk.eu/news/designview-online-consultation-tool-designs

Lin V. Design Patent vs. Trademark: Comparing differences and finding the best IP to protect your products

https://yourstory.com/2019/08/innovation-design-industry-40

L.R.P


Sign up for Legal Boutique updates

By entering your email adress, you consent to recieving our newsletter with access to our latest news from intelectual property, knowledge and business transformation. More details are provided in our privacy policy.