Design Protection

Today, the unique design of a product and its packaging is paramount. It is one of the most decisive sales arguments, and often at the origin of customer choice. In many cases, product appearance alone allows it to set itself apart. Companies can, therefore, influence their marketing assets by protecting their designs. This article summarizes how exactly Design Protection works and what is needed for it to be successful.

What is Design Protection?

By registering the design, its owner acquires the right to solely use and market this design on the market, and this entails prohibiting third parties from using or imitating it. If a Design Protection is breached, its owner may defend his exclusive right and demand the cessation of sale and production by another company. Moreover, Design Protection asset holders can also prohibit the use of a design with similar overall impression.

Protection is granted by application and registration with the German Patent and Trademark Office (DPMA) or the European Intellectual Property Office (EUIPO) and remains a temporary monopoly. This includes appearance, external color and shape of a product. The grant holder's product then differs from other offers, so that customers validly recognize the manufacturing company trough it.

Which Companies Need a Registered Design?

Design protection is automatically guaranteed within the EU as unregistered Community design. Nonetheless, this is only effective for three years. Meanwhile, if an important product promising higher economic marketing shall be protected over time, an active application is necessary. This includes the complete and correct representation of all figures and illustrations.

Any completely new product of an unmistakable character fulfills the prerequisites for applying for its design protection.

Nevertheless, a grace period applies in any case. This means that your own publications of the design, which are not more than 12 months older than filing date, will not harm your own design claims. It is therefore advisable to register before publishing.

Protection for various designs is valid in Germany and throughout Europe for a maximum of 25 years and can be extended by the applicant every five years.

What is the Difference Between a Design and a Utility Model?

In contrast to a "design patent" or registered "design" (the European Intellectual Property Office calls a protective right a "design patent" while the German Patent and Trade Mark Office call it a "design"), a utility model does not protect the external form and design of a product, but a technical invention and is, therefore, more comparable to a patent.

Protection of a design, as part of industrial property rights, extends to all products in their two- or three-dimensional manifestation. It does not matter whether the design is intended for a complete product or only part of it. A design is represented by equipment, packaging, symbols, and characters.

All products are registered for design protection by the exact representation of their external appearance with the competent authority and then precisely defined and protected in their visible features. This applies to, among other things, coloring, lines and contours, surface structure, shape as well as material of the product.

If a product or its new design meets all requirements to be registered as a design, its features remain valid conditions of protection for the market(s) and specified period therein. It is important that the design is new and unique.

If designs shall be protected in a specific EU country only, an application to the "Intellectual Property Office" of this country is necessary. However, if the product shall be marketed in all EU countries without copies being made, filing a registered European Community design via the "Office of the European Union for Intellectual Property" (EUIPO) is recommended. A design must always be filed with a product name.

A design is a handsome protection right, especially at national level. Moreover, acquisition costs and fees tend to be lower:

https://www.dpma.de/docs/formulare/designs/r5704.pdf (leaflet).

A reasonable strategy, however, is to apply for several designs at once, thereby making it more difficult to circumvent the protection. Similarly, a complete product portfolio or a new and unique design line can be protected by a single collective application. It is sensible to protect the product name by trademark and, if applicable, the underlying technical invention with a patent or utility model at the same time.

What is the Purpose of the Protection by Design Application?

Protected marketing is interesting for all those companies developing an original or unique idea for their products. On top of protecting this design and product, application and approval via a registration office also helps in attracting licensees as well.

Tips and Requirements for Protected Design

The novelty and uniqueness of the design always remain decisive. The overall impression should be fundamentally different from other products and the design should be accordingly unique, innovative, new and original. Tips for design and presentation of the product for or during registration can be found on the Internet. If a lawyer is engaged, he takes over the correct representation and assessment of the design, and also helps to clarify whether this design can stand up to judicial review in a possible dispute.

Where can the Design Application be Made?

It is always advisable to file the design application before marketing and publication and to commission a law firm to do so. If legal matters happening to need clarification arise, a lawyer can be called in. This avoids various pitfalls by, for instance, selecting unsuitable depictions necessary for the exact representation during registration. Such risk is substantially smaller when previously clarified with a legal adviser. A lawyer may also file your design internationally, e.g. in China, the USA or other countries.

If you wish to file a design patent with the DPMA, as the product should be protected primarily in Germany, a look at this website can help:

https://www.dpma.de/docs/formulare/designs/r5704.pdf (leaflet)

The DPMA website also contains a register for all patents, trademarks, designs and utility models accessible free of charge as well.

For Europe or individual European countries, the application for design protection is made via the "EUIPO". Designs and trademarks can be registered here (no patents though). Protection can then be extended for up to 25 years thereby increasing the company's representative asset.

A "priority period" applies within 6 months of filing a design in Germany or Europe. By claiming priority, subsequent International applications will be granted the filing date of the first application.