Why Protect Your Design in the European Union?
By OHIM
This article is part of a series of articles on design protection in the European Union. For links to the other articles, see the bottom of this page.
Innovate Or Die
Design is the emotional and rational answer to the actual needs of the end consumer. The crucial factor in a successful design is achieving a successful marriage between technological innovation and design—a beautiful object in and of itself is not sufficient. In the current international environment, the most innovative companies place the design management policy (innovation, creativity, inventiveness) at the center of the decision making process and huge resources are invested in design management and innovation through design. Design itself is the pillar of the product, branding, packaging, publicity, merchandising, and Internet communication.
Why Should I Protect My Design if the Product is Self-Selling?
Aesthetics and design have economic value. If a design catches the eye of the consumer, sales rise and the design ROI is positive. If the product sells itself, why is it so important to protect the design? Design grants visibility and attractiveness to the product and adds to its commercial value. It is only logical to protect the source of this rising market value.
Creating a distinctive design is the key goal for a product in a company, a symbol of continuity and quality. Design becomes a signature and as with all signs, can be imitated by companies willing to get their share of the market without making the necessary investments. This is called imitation, piracy, or counterfeiting.
Questions About Protection
When a company creates a newly-designed product, the first step is to check what can be protected through legal protection. Is this a new technical answer associated with a new form factor? Is this a combination of colors associated with new lines?
It is important to verify with the creative that the design is really new (not an imitation of an old design) and has an individual character (originality, what makes this product different from the others existing previously). If these two conditions are met, the product can be protected through a right of industrial design.
The next step is to define the extent of the geographical protection depending on the market, the commercial strategy of the company, and any eventual partnerships and license contracts. This will define the extension of the protection: national, international, at the European level, or combined. Once those crucial choices have been made, the next step is protection itself.
Right Of Design
The design can be two-dimensional (graphics, logotypes, labels, posters, ornamentations, specific combinations of colors, etc.) or three-dimensional (product, packaging, or part of a product). When one protects the design applied to a product or incorporated into a product, the right holder is protected against the copy or the imitation of the design from non-authorized third parties in the limit of the sphere of influence called “overall impression” produced on the users. Hence, the limitation of the right is the general impression induced by one particular design on users (the target user generally called “informed user”).
When a design is applied for and registered, a certificate of registration is sent to the applicant. This title proves that the design is registered and is aimed at facilitating legal processes against counterfeit and piracy. Duration of protection varies according to the selected way of registration. Most protection is for five years, but it can be prolonged for up to 25 years. The protection is geographically limited to the territory in which the registration is valid.
For example, if a design is protected in Ireland (Irish national registered design right) the design will be protected only in the Republic of Ireland. This means that manufacturing and selling such a product in Germany or in the United Kingdom will not be considered piracy, since the design is not protected in these countries. Depending on one’s market area, some will protect the design only in one country while others will need to protect their design in the entire European Community or in all the areas defined as those where the product can be technically produced or will be marketed. When deciding where to protect the design, one should not forget that the EU is now a market of more than 450 million inhabitants with no internal frontiers. That means that products which are not protected in one country can be freely produced there and that no frontier controls will prevent the products from entering its home market! In such cases, one can only try to stop the sale of the products once they have already entered, which in most cases is far too late.
Design rights are inexpensive, even cheap, compared to the price of fighting against counterfeiting and piracy. Generally speaking, the registration fees of a design application have been conceived so that independent designers or small companies can afford to protect their designs all over Europe, either through international, Community, or national registrations. For the latter, design protection was harmonized within the European Union. The aim of this harmonization of the national design rights within the EU was to grant essentially the same rights with the same level of efficiency against counterfeiting and piracy all over Europe. However, one still needs to apply for protection in each country.
When the decision has been made to protect one’s design, it is important to assess how it can be protected and in which countries. Then a strategy of protection can be created. In this context, the ownership of intellectual property rights must be carefully asserted—it is not unusual that 35% to 50% of the design activity is performed outside the company. Granting licenses can also be considered when a company cannot handle manufacturing or extensive commercialization.
This article appeared in the October
2005 eBulletin.
Feedback on DMI Viewpoints and article proposals
are always welcome! Please email jtobin@dmi.org.
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