A registered Community design right may provide protection for the appearance of a product or part of a product. The appearance can result from the shape, lines, contours, ornamentation, colours, texture or materials of the product. In this context, a product means any industrial or handicraft item except a computer program, and includes parts intended to be assembled into a complex product, packaging, “get-up”, graphic symbols or typefaces.
Accordingly, a very wide range of designs are capable of being protected by a registered Community design. Potentially protectable designs can include two dimensional designs (e.g. the pattern on a computer mouse mat), three dimensional designs (e.g. the shape of a computer mouse), designs comprising two and three dimensional elements (e.g. the overall design of a mobile phone). Designs for components of complex products that are visible in use (e.g. the wing mirrors of a car), and for industrial products whose aesthetics are irrelevant, may also be protectable.
In addition, designs capable of protection can include logos, stylised word, labels and the appearance of packaging, that have traditionally been protected by trade marks and/or copyright. In fact, registered Community designs may be a useful supplement or alternative to trade mark protection where trade mark protection may be difficult to obtain or cannot be secured without extensive use, for example, where protection is sought for the shape of goods/packaging.
In order for a design to be protected by way of a registered Community design, it must not only fall within the category of protectable designs described above, but must also fulfil certain other requirements:
- It must be new
A design will be regarded as new unless the same design, or a design whose features differ in only immaterial details, has been made available to the public at either the filing date or the “priority date” of the Community design application. (The priority date is the filing date of an earlier first application for the same design, filed no more than six months earlier, from which “priority” has been validly claimed).
- It must have “individual character”
A design is regarded as having “individual character” if it produces a different overall impression on an informed user to that produced by any previous design. The degree of freedom the designer has in developing the design is taken into consideration when assessing individual character. For example, a person designing a computer mouse has less freedom to make a creative variation than, say, a fashion designer.
- It must not be contrary to public policy or accepted principles of morality.
For example, a design containing racist elements would not be protected.
Even if a design fulfils all the requirements for protection, certain features of the design are still excluded from protection. Subject to minor exceptions, there is no protection for features of a design which (i) are solely dictated by technical function, (ii) component parts of a complex product, unless those component parts are visible during normal use, or (ii) must be reproduced exactly to enable the product to fit with another product so that either product can fulfil its function. For example, a design for a new bottle with a standard screw cap fitting will not receive protection for the screw fitting part.
In practice, when the European Union Intellectual Property Office (EU IPO) examines a registered Community design application, it will not consider whether a design is new or has individual character, or whether some or all of its features are excluded from protection. Because of the limited examination, it is possible that some registrations will be granted for designs that are not entitled to protection or are only partially entitled. Such registrations will be wholly or partially invalid. However, as the onus is on a third party to challenge validity, and it may not always be clear to what extent a design is protected (particularly since Community design law is relatively new and there is limited guidance as to how it will be interpreted), a potentially invalid registration can still have deterrent value. We can advise on whether a design is suitable for registration and comment on the scope of protection which a registration may provide.