about design protection

Design rights protect the appearance of a product or part of a product. In the EU, protection is available through registration and, where the legal requirements are met, automatically as an unregistered EU design.

For EU-wide registration, you can apply directly to the European Union Intellectual Property Office (EUIPO) for a registered European Union design (registered EU design), formerly called a registered Community design (RCD). A single registration covers all 27 EU Member States. National design registrations remain available through the relevant national intellectual property offices. The appropriate route depends on the territories in which you need protection.

EU design rights do not cover the UK. Since 1 January 2021, separate UK protection has been required. Registered Community designs that were registered and published before that date generally received equivalent, independent UK registrations automatically.

What does a design protect?

A design protects visual features such as shape, lines, contours, colours, texture, materials and decoration. Protection can also cover movement, transitions and other animation of those features, and can apply to both physical and digital products. Computer programs themselves are excluded.

Design rights do not protect a product’s technical function. Features of appearance determined solely by technical function are excluded from EU design protection. Depending on the applicable requirements, the same product may also benefit from patents, trade marks or copyright protecting different aspects of it.

Registered EU designs

To qualify for protection, a design must be new and have individual character. Individual character means that its overall impression on an informed user differs from that of earlier publicly disclosed designs, taking account of the designer’s freedom.

A registered EU design can protect against unauthorised use of designs that do not produce a different overall impression, even where they were created independently without copying. Protection is subject to statutory limitations and exceptions.

How long is a registered design valid for?

Protection begins upon registration. The initial registration lasts five years calculated from the filing date and can be renewed in five-year periods, up to a maximum of 25 years from filing.

Rules differ outside the EU. In the United States, design protection is obtained through a design patent issued by the USPTO. For applications filed on or after 13 May 2015, the term is 15 years from grant.

Unregistered designs in the EU

A qualifying design can receive automatic protection as an unregistered EU design, without an application or registration fee. Protection lasts three years from its first qualifying public disclosure within the EU and cannot be renewed.

what can be a registered design?

Examples of potentially eligible subject matter include:

• Products, packaging and sets of articles.

• Product parts, subject to specific rules for components of complex products.

• Graphic works, logos, icons and surface patterns.

• Typographic typefaces.

• Graphical user interfaces, including website and app interfaces.

• Digital products and animated visual features.

• Spatial arrangements of items forming an interior or exterior environment.

Eligibility depends on the particular design meeting the legal requirements, including novelty and individual character.

benefits of an eu design

A design is a practical way to define and protect your innovation. A design is a company asset that can be traded or used as collateral, that rewards your creative effort, that acts as your IP signature. 

Obtain a registered design for 27 countries in 2 weeks, with

• a single application,

• a single language of filing,

• a single payment,

• the possibility of filing multiple applications (i.e. to include several designs in one application, such as a whole range of similar products),

• the possibility of keeping the design undisclosed for up to 30 months (so it is not revealed to competitors).

The design system offers a ‘bulk discount‘. For a multiple application, the fees for registering the 2nd to the 10th design are subject to a 50% discount while, for the 11th design onwards, the fee is just 25% that of the basic fee per design.

Grace period
A designer (or subsequent owner of a design) can apply for protection up to a year after they first disclose a design, without their own disclosure being detrimental for registration. In other words, a design is considered a novel for one year after disclosure.

DESIGN application procedure in the eu

Representation before the EUIPO
If the applicant does not have a domicile, principal place of business in the European Economic Area (EU and Iceland, Liechtenstein and Norway), there is an obligation to be represented by a legal practitioner or a professional representative before the EUIPO.

Priority
Anyone who has filed a design application in any state of the Paris Convention may claim priority. The subsequent filing with EUIPO must be made within six months of the first application.

Presentation of the design
The design should be represented by at least one view, but up to seven views per design submitted, plus three extra unprotected views. The same applies to multiple applications, with up to seven views permitted for each design applied for.

Filing
An applicant may file as many designs as they wish in one multiple application, the only condition being that the products to which the design is applied belong to the same Locarno class, in other words, that they pertain to the same type of goods.

In case the applicant chooses deferred publication, a request for deferment must be made on the initial application form. (The design can be kept undisclosed for up to 30 months from the filing date or from the date of the earliest priority claimed, so that it is not revealed to competitors.)

Examination
Only formalities are checked in the applications. There is no in-depth, substantive examination, except to verify that the application is for a design and that the design is not contrary to public policy or morality. Unlike the EU trademark system, there is no opposition procedure.

Excluded from examination
The Office will not, of its own motion, check whether your design is new or if it possesses individual character. Third parties can request that your design be declared invalid. The invalidity procedure can only be launched against a design once it has been registered and not during the registration process.

A design application is examined by EUIPO’s examiners, and if everything is in order the design will be registered and published immediately.

The whole time-frame for registering a European design with Pintz & Partners is about 2-3 weeks.