Design Protection
Design rights are used to protect a products design and appearance, but not its function or underlying idea. A nice design is often a good selling point and is therefore worth protecting. A registered design can also be an element of success when you negotiate with investors or when you are writing licensing agreements. Investors and business partners may then feel safe knowing that the company has the exclusive right to the design.
The exclusive right commonly arises through registration of the design. To be protectable as a registered design, a design must be new and possess individual character, meaning it has to give a different overall impression than previously known designs for the same or similar products. Before your launch your product, and we file an application for a registered design, we can conduct a database search to see if your design risks infringing another parties registered design rights. A registered design gives you a documented protection for the design for a maximum of 25 years. We have a well-established network of firms and attorneys in most countries where Swedish companies want to pursue business.
Q&A about Design protection
What is required to obtain a valid design right?
In order to obtain a design right, a number of requirements need to be fulfilled:
- The design has to be new, which means it cannot be identical to another publicly available design. You have a grace period of one year from first making the design publicly available to register your design.
- The design must possess individual character. The overall impression of the design must differ from other designs that have been made publicly available. Furthermore, simple and banal designs that must be available to all cannot be registered.
- The design can not be exclusively dictated by a technical function. A design right is a protection for aesthetical aspects, and not for technical functions. Technical functions belong to patents.
- The design must not include a trademark, portrait, surname, or copyrighted material, belonging a third party.
- The design must not be contrary to morality, and not include armorial bearings, flags, official signs, or the like.
How does design protection work in different countries?
In Sweden it is possible to obtain design protection by filing a national application for a registered design to the Swedish Intellectual Property Office, PRV. If you would rather have protection in all of the EU, an application can be filed with the European Union Intellectual Property Office, EUIPO. When it comes to protection outside of the EU, there is an international authority, WIPO (World Intellectual Property Organization) where an application for a registered design can be filed. Design protection lasts for a maximum of 25 years in Sweden and in the EU. In other countries, the duration varies, in the US, for example, the duration is only 15 years.
Can and should you monitor your registered designs?
Since the authorities in the EU and in Sweden do not examine applications for registered designs against previously registered designs, we recommend that you monitor your own registered designs. We offer such monitoring. Often, you as our client, has good knowledge of your competitors and their products. If you therefore wish to monitor a particular competitor’s new applications for registered designs, we can help you with this too.
How can design rights and patents be used as complementary protection?
A design right can act as a complementary protection to patents, one form of protection does not exclude the other. A design right protects the appearance of a product or part of a product, and in particular lines, contours, colours, shapes, surface patterns, and materials. A patent, on the other hand, protects the solution to a technical problem. While a patent may take years to grant, a design protection typically gives rise to a registered right quickly. If you wish to seek both patent and design protection for the same product, it is important to request secrecy for the design application, if the patent application is not filed at the same time, since a publication of the design otherwise may form novelty-destroying prior art against the patent application.
Is an unregistered design protected?
An unregistered design that fulfills the requirements for a design right is protected, but note that it is only protected for three years and only against copying. If you want your protection to last for longer than that, you will need to apply for a registered design right within one year from the publication of your design. An unregistered community design that fulfills the requirements for a design right is effective as soon as the design has been published within the EU.
Can you base contracts or agreements on design rights?
We help our clients to write, review, and negotiate, design right agreements such as licensing agreements, assignments, and coexistence agreements.
Should you perform a database search before the product launch?
Prior to development of new products, as well as launch and marketing, there are several advantages associated with performing a database search (e.g. a novelty search or a freedom-to-operate search) to, for example, see if similar products have previously registered as designs, or to ascertain that the new product does not infringe a valid registered design for a similar or identical product. We can help you perform such a database search, and its results may form an important basis for decisions for the company.
Please do not hesitate to contact us if you wish to know more about design protection!
