On this page you can read everything you need to know about design rights and how it can protect your ideas.
- What are design rights?
- What is a design?
- What is design protection?
- Should you opt for a design right or a patent?
- Design right or trademark?
- How do I file a design?
- What is a design register?
- What are the costs involved in a design registration?
- What are the advantages of design protection via EP&C?
- What is the smartest way to record a design?
WHAT ARE DESIGN RIGHTS?
Design rights are a form of intellectual property right. A design right can be used to protect the appearance or the design of a newly designed item. This protection applies for a certain period of time and for selected countries and/or regions. Officially design rights are known as design and models rights.
WHAT IS A DESIGN?
A design is an appearance that can be protected. It is possible to protect both two and three-dimensional items. Examples of designs that lend themselves well to protection as a design in terms of their appearance are:
- Consumer products
- Building materials
- Industrial designs
In addition to protecting the whole item, it is also possible to just protect a particular element of such an item with a design right. It is also possible to protect a drawing, pattern or (2-dimensional) design that can be applied to an item with a design right.
WHAT IS DESIGN PROTECTION?
The design right gives you the exclusive right to the commercial use of a new and distinctive design for a certain period of time. This exclusive right is also known as design protection.
This allows you to prohibit others from using the design without your permission. Design protection thus makes it possible for you to combat counterfeiting and prevent others from piggybacking on your success. This generally does not require any expensive legal proceedings. A written warning will often suffice.
You can also grant others permission to use the design, for a fee, by granting them a licence. This can be very lucrative.
Patent Design Check
SHOULD YOU OPT FOR A DESIGN RIGHT OR A PATENT?
If you are wondering whether it is smarter to protect an innovation with a design right or a patent right, you can generally apply the following rules:
- If the development is at least partly a technical solution to a technical problem, you can protect it with a patent right.
- If the development is at least partly an aesthetic design, you can protect it with a design right.
However, design protection and patent protection do not have to be mutually exclusive. They are often even set up side-by-side in order to provide optimum protection for an invention or innovation. This is because in many inventions and innovations both technical and design aspects tend to play an important role. The relationship between technology and design is pivotal in this respect and both must therefore be protected.
In a protection strategy, we weigh up the maximum protection against the costs. Depending on our advice and your wishes, we decide whether to opt for patent and/or design protection.
WHAT IS THE DIFFERENCE BETWEEN A PATENT AND A DESIGN RIGHT?
A patent is not the same as a design right. In a nutshell, these are the main differences:
|Period of protection||Up to a maximum periode of period of 20 years||Up to a maximum period of 25 year|
|Has the innovation already been publised?||Total novelty requirement in multiple countries/regions||a 12-month period of grace* after publication in multiple countries/regions|
|Nature of development||Technical||Design|
|Costs||From € 7.000,-||From € 1.340,-|
* A period of grace is a time for reflection. If you have brought your product/packaging/design into the public domain, you can submit a design application up to 12 months after doing so. However you should note that not every country has a period of grace.
DESIGN RIGHT OR TRADEMARK?
A trademark is applicable to:
- A colour combination
- A combination of the above.
A design right is applicable to an item and remains valid for a maximum period of 25 years. A trademark focuses on the identity, for example of a company, and can be maintained indefinitely. According to current opinion, it is no longer possible to protect the design of items with a trademark.
HOW DO I FILE A DESIGN?
In order to establish a design right and thereby obtain design protection, an official registration is required. This starts with the drafting and filing of a design application.
The design application includes (line) drawings, photographs or other types of images. In one or more views and/or perspectives, these collectively show the external design to be protected. They give an overall impression. Collectively, the images must clearly show which design aspects determine the individual character of (an element of) the item.
There must be no discrepancies between the images in the design application. This will inevitably lead to the design application being split up. This will result in double costs, the application being turned down, or your being forced to drop one or more images.
WHAT DOES THE DESIGN REGISTRATION PROCEDURE LOOK LIKE?
To apply for design rights, you have to complete a number of steps. This is the procedure:
In the development phase, contact a design attorney. Together you discuss which forms of protection are possible.
If your product innovation is suitable for design protection, the design attorney will draw up a design application. This is done on the basis of images of your product innovation. You indicate non-substantial sub-characteristics as optional parts. A multiple design application is then drawn up to protect multiple variants.
The design attorney files a priority design application, for example for the European Union.
Within the priority period of 6 months, the design attorney files any subsequent design applications for countries or regions outside the European Union.
HOW IS A FILED DESIGN ASSESSED?
The assessment of a filed design is generally a quick process. For most countries, no substantive assessment of the design application involving a comparison to similar older designs takes place. As long as the images are correct and unambiguous, your design application will be granted. There is hardly ever any need to make adjustments. It is therefore important to ensure, prior to filing, that you obtain the maximum scope of protection with your application.
If an examiner at the Design Office nevertheless does object to your images, this can have a major impact. Often this means that a discrepancy has been discovered which may not be corrected. For example, if the drawings do not show exactly the same product. This can lead to double costs, or to one or more images being dropped, as a result of which you do not get the maximum scope of protection.
On the whole, design applications are quick procedures. Design rights are generally granted within a matter of days or weeks, except in the US, where a design application does have to go through a granting procedure. A US design patent is only granted upon approval.
WHAT ARE THE REQUIREMENTS FOR DESIGN PROTECTION?
A design qualifies for design protection if:
- It concerns a new appearance of an item.
- This appearance was first brought into the public domain not more than a year ago.
- The appearance is of an 'individual character', i.e. it is sufficiently different from existing designs.
- There is no technological exception for the whole design.
If certain characteristics of the design are determined exclusively by technology, they cannot be protected by a design right. In this case technological exception applies. A design attorney with knowledge of technology can determine for each design application whether technological exception applies.
In short, the most important requirements for a design to qualify for a design right are that the application must be filed within 12 months of the design first being brought into the public domain*, and that the differences between existing designs and the current design must be big enough to give it an individual character.
* As this is not the case in all countries, we strongly recommend that you register your design rights before introducing the innovation into the public domain.
HOW DO I PREPARE FOR AN INTERVIEW WITH A DESIGN ATTORNEY?
If you are going to discuss the options for protection with design rights with one of our specialised design attorneys, you can prepare yourself as follows:
- Bring drawings or photos of your design or product with you.
- Do research into designs that are similar to yours and bring these results with you.
- Form a picture of your commercial strategy: which countries are important to you, what is your timeframe, how important is obtaining exclusivity, and what costs may be involved?
HOW DOES DESIGN PROTECTION START?
Protection based on a design right commences on the date on which the design application is filed. From that moment on you have an official filing date and are provisionally protected.
Formal approval and the subsequent official registration and granting of your design right will often take place within a matter of days. From that moment on you can officially operate with your exclusive design right.
When filing your design application, you can also ask for it to be kept secret for a maximum period of 30 months. This can be of overriding importance if, in addition to design protection, you also want patent protection. When it comes to patent protection a novelty requirement applies in most countries; the innovation must not be in the public domain.
If your design right has already been brought into the public domain, your patent application (which often takes longer) will not meet this requirement.
SHOULD I OPT FOR DESIGN REGISTRATION IN THE NETHERLANDS, BENELUX OR EUROPE?
It is not possible to apply for design registration that only applies in the Netherlands. You have the choice between filing a design right for the Benelux or for the European Union.
There is only a slight difference in the costs between the two applications, which is why we usually recommend applying for protection throughout the European Union.
If you want a design registration that applies throughout the European Union, then you should opt for a so-called European Community design application. With one combined design application you will then be protected in the following 28 Member States:
* Even though the United Kingdom has left the EU, any European design application filed before 1 January 2021 is also valid for the United Kingdom.
IS THERE SUCH A THING AS A WORLDWIDE DESIGN REGISTRATION OR GLOBAL DESIGN RIGHT?
No, there is no such thing as a global design right. Design protection must be arranged per country or region. That is why the registration of designs is always a strategic choice for certain countries and/or regions.
In principle, you have to file design applications and complete a registration or granting procedure in every country where you wish to obtain exclusive design rights.
However, there is the option of a so-called international design application. In this case, you apply for protection for a number of countries and regions, including the European Union, the US, Korea and Japan. However this is rarely the smartest route. The requirements and options in these countries and regions to obtain the maximum scope of protection still vary considerably.
WHAT SHOULD I DO IN THE EVENT OF AN INFRINGEMENT OF MY DESIGN RIGHTS?
Your design rights give you the right to prohibit or, on the other hand, to allow others to market items which create the same overall impression on informed users. In short: design protection gives you the opportunity to combat counterfeiting and stop other from piggybacking on your success.
Anyone who tries to copy your protected product in full, or who tries to market a product that too closely resembles your product, can be barred from the market.
This generally does not require any expensive legal proceedings. A written warning will often suffice.
If someone infringes your design right, please contact one of our design attorneys to discuss how we can best deal with this competitor. You can either prohibit this party from manufacturing or marketing the products, or you can engage in talks with them to arrive at an attractive solution for both of you.
WHAT IS A DESIGN REGISTER?
Design rights are recorded in publicly accessible design registers. These contain the status and other information of published designs from all major countries and regions. This can be done on the basis of keywords, designers, design owners and even on the basis of similar images.
WHAT ARE THE COSTS INVOLVED IN A DESIGN REGISTRATION?
The costs for a single European design registration in the 27 countries of the European Union, including the first 5 years of protection and the costs of a design attorney, amount to € 1,340.
You can protect additional variants of your design by filing a multiple design registration For each additional design there will then be an additional charge of € 670.
For a design registration in other countries the costs very much depend on which countries you choose and the strategy you pursue to obtain this protection. We can provide you with cost estimates for this.
WHAT ARE THE ADVANTAGES OF DESIGN PROTECTION?
- Design registration makes it possible for you to take steps against fake products that use your distinctive design. Once your design has been registered, you can prohibit others from using it. Third parties are then only allowed to use it with your permission. A registration can therefore save you a lot of money.
- It is up to you to decide what geographical coverage you want. Are you going to opt for protection throughout Europe with a Community design or also in the United States and China, for example?
- A European design registration is valid for five years and can subsequently be renewed for a period of five years at a time, up to a maximum of 25 years.
- Compared with applying for a patent the costs are relatively low.
- You can still register the design in the EU up to 12 months after publication. However, we recommend that you register your design prior to introducing it into the public domain.
WHAT ARE THE ADVANTAGES OF DESIGN PROTECTION VIA EP&C?
At EP&C we have attorneys who are able to combine their technical academic background with their legal training, which not all other trademark and design attorneys are able to do.
Their training gives them the tools to fully understand technical innovations and to guide you through what is and is not possible in terms of design and patent rights and thus ensure the broadest possible scope of protection for your idea.
What do you show and not show? What do you record and not record? These are questions that every trademark and design attorney will take into consideration. However, not every trademark attorney has the technical knowledge to make the right choices when it comes to this.
Too many details unnecessarily restrict the scope of protection. Too few details can lead to a lack of novelty or insufficient individual character. And do you take technological exception into account in this? The Act on Designs or Models prescribes that a design right is not valid for external product features, which are exclusively determined by their technical function. This is technical/legal specialist work, for which you can often not turn to a trademark attorney who is only legally trained.
WHAT IS THE SMARTEST WAY TO RECORD A DESIGN?
In order to be able to arrive at a solid design protection, it is essential to have a good understanding of the technology involved and the role it plays in the design. Only then can we determine with which sets of drawings and/or photographs the design to be protected can best be recorded.
Just like when drafting the claims of a patent, it is important to think carefully about the way you do this when recording a design. What you can or cannot see on the images is ultimately going to be crucial for your rights.
By including details in a design registration you claim these and the protection is limited to these. Emphatically not claiming, also known as disclaiming, can be done, for example, by omitting details or by using dotted lines in a drawing to indicate elements for which no protection is sought. We can then combine this with a multiple design registration in order to achieve a maximum scope of protection.
SHOULD I REGISTER A DESIGN MYSELF OR OUTSOURCE IT?
Do not be tempted to file a design registration yourself, for example at the EUIPO in order to get a Community design. This may seem easy and cheap, but if your registration has not been set up properly, it will be impossible to correct it at a later stage.
AT WHAT STAGE SHOULD I START THINKING ABOUT REGISTRING MY DESIGN?
You cannot start thinking about protecting your innovation early enough. The sooner you start thinking about protection - and therefore also about your competitors - the sooner it will become clear which method of protection is best in your case.
AT WHAT POINT SHOULD I FILE A DESIGN RIGHT?
We recommend that you register a design before you introduce it into the public domain. In a number of countries, including those within the EU, it is possible to do this after it has been brought into the public domain. You then have to apply for a design right within twelve months of that first publication. This period is referred to as the period of grace.
As this is not the case in all countries, we strongly recommend that you register your design rights before introducing the innovation into the public domain.
WHAT ARE THE BIGGEST PITFALLS IN DESIGN PROTECTION?
The biggest pitfalls in design protection include:
- Showing too much or too little detail in the images.
- Showing too many or too few views in the images.
- Discrepancies between images.
- Filing multiple designs for too many or too few variants.
- Not applying for design protection because of the erroneous assumption that a design is entirely technically determined.
- Too broad, too limited or wrong interpretation of the scope of protection of a design right, e.g. as a result of technological exception and/or pincer effect.
- Trying to do everything yourself to cut costs.
- Not including a country such as China in the protection because one assumes that everything is copied there anyway, and a design right is not enforceable there.
- Wanting to protect too many countries or regions.
Direct consequences of these pitfalls could include:
- Loss of maximum scope of protection.
- Loss of novelty and/or individual character.
You can also quickly incur unnecessary extra costs or lose images.