Design Protection

The unique design plays an important role in packaging and products today and is one of the most decisive sales arguments. Often the appearance alone allows the product to stand out from others. Companies can, therefore, influence marketing by protecting their designs. How exactly this works and what is needed for it will be shown in this article.

What is Design Protection?

By registering the design, the owner of the registered design acquires the right to use and market the design alone on the market, while third parties may be prohibited from imitating it. In the event of an unlawful act, the owner may defend the exclusive right and demand the cessation of production or manufacture. Companies can also prevent the use of a design that conveys a 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. The protection includes the external color and shape design of the products. These then differ from other offers, so that customers orient themselves to the company itself about the product.

Which Companies Need a Registered Design?

As a rule, design protection is automatically guaranteed within the EU. The speech will then be made by an unregistered Community design. However, this is only effective for 3 years. If, on the other hand, an important product that promises higher economic marketing is to be protected over time, an active application is necessary. This includes a correct representation of the figures and illustrations.

The prerequisite for companies to apply for design protection is given when the product is completely new and has an unmistakable character.

An exception, however, is the grace period. This means that your own publications of the design, which are not more than 12 months before the filing date, are not harmful to your own design. However, it is advisable to register first and then publish.

The protection for various designs is valid in Germany and throughout Europe for a maximum of 25 years and is extended by the application in 5-year stages.

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

In contrast to a "design patent" or registered "design" (note: In the case of the European Intellectual Property Office, the protective right is called a "design patent" and in the case of the German Patent and Trade Mark Office, 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 is only part of the product. The 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 are then precisely defined and protected in the visible features. This concerns, among other things, the coloring, the lines, the contours, the surface structure, the shape and the material of the product.

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

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

The design is a favorable protection right, especially at national level and on the part of the Office, costs and fees tend to be lower:

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

For a reasonable protection strategy, however, not only a single design should be applied for, but several in order to make it more difficult to circumvent the protection. It is also possible to protect a complete product portfolio or a new and unique design line, which is then protected by a single collective application. It is best to protect the name of the product with a 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 Afforded by a Design Application?

Unique marketing is interesting for many companies who develop an original idea for their products. In addition to the protection of the design and product, the application and approval via the Office also helps in attracting licensees.

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 the design and for the presentation of the product during registration can be found on the Internet. If a lawyer is engaged, he takes over the correct representation and assessment of the design, also helps to clarify whether the design can stand up to a judicial review in a possible dispute.

Where can the Design Application be Made?

It is always advisable to make the design application before marketing and publication and to commission a law firm to do so. If legal matters must be clarified afterward, a lawyer can be called in. In order to avoid various pitfalls in the selection of suitable photos, which are necessary for the exact representation for registration, the risk is substantially smaller by the previous clarification with a legal adviser. Through a lawyer you also have the possibility to file your design internationally outside Europe, 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)

On the DPMA website, there is also a register for all patents, trademarks, designs and utility models accessible free of charge.

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), whereby protection can then be extended for up to 25 years and the representative asset of the company increased.

Within 6 months of filing a design in Germany or Europe, the so-called "priority period" applies. By claiming priority, you can file international subsequent applications and still get the filing date of the first application assured.