The great value of design
Design plays an important role in the success of a product in the market. This also applies to technologically innovative products such as mobile phones, razors, cars, etc. The legal possibility of being granted exclusive rights, and thereby be able to prevent others from copying a design, is crucial in order to be able to fully utilise the competitive advantage conferred by a well-developed and appealing design.
Requirements for registration of a design
The most important requirements in order for a design registration to be legally valid are that the design must be both new and must have individual character. A design is considered to be new if no virtually identical design has been made available to the public before the application.
A design is considered to have been made available to the public if it was disclosed to the public within a registration procedure or otherwise has been made publicly available, for instance by having been on display or used. If this is the case, the design is no longer new. It does not matter who disclosed the design to the public. This includes measures taken by the designer. In Sweden and the EU, for instance, it is possible to have a grace period after disclosure in certain circumstances. This means that it is possible to apply for registration of a design for up to twelve months after the design was disclosed to the public.
A design is considered to have individual character if the overall impression it produces in the informed user differs from the overall impression produced by any other design which has been available to the public prior to the application for registration. The applicant is therefore responsible for e.g. ensuring that the design is both new and has individual character. A design that is registered without meeting these legal requirements may later be cancelled or declared invalid.
Think carefully before submitting an application
Since it is the visual material in the application that determines the scope of protection of the registration, careful consideration must be given to the visual material that is submitted and how it is presented. Should the images show the basic design and/or details? Is it the entire product design that needs to be protected and/or parts of the product, etc? The protection will vary considerably depending on the choice of images in these respects. It is therefore important before filing the application to consider these questions in order to ensure an adequate and in practice useful protection. Errors made during the application process can rarely be corrected in retrospect.
The importance of exclusive rights
Registration of a design in Sweden means that the owner is granted an exclusive right to use the design and is therefore able to prevent others from using every other design that produces the same overall impression as the registered design. Anyone who uses such a design without permission infringes the design rights and may, for instance, be obligated to pay damages. The exclusive rights can be licensed, pledged, sold, etc. A design registration in Sweden or the EU can normally be maintained for a total of 25 years.
Other ways to protect a design
In certain cases a design protected product can also be protected in other ways, which means the product can have parallel or partially overlapping protection. Copyright arises automatically upon creation without any registration or other formalities. It can include utility goods and industrial design provided that these are original creations. Sometimes the appearance of a product or a packaging can also be protected by means of trade mark registration.
In certain circumstances, marketing law can also offer protection of design and prevent misleading reproductions or reputation parasitism, i.e., parasitic copying of well-known designs. There is also another form of protection for unregistered community designs aimed at e.g. fashion wear with a short economic life span. However, this only gives protection against copying of the protected design and the protection is limited to only three years.
Law firm of choice for knowledge-intensive businesses
The Gulliksson law firm has extensive experience in the field of design law and provides legal advice concerning design applications, strategies and disputes, as well as licensing.