Design Protection
National:
• Industrial Property Code/SMK (2017)
International:
• Paris Convention (1883)
• WIPO: The Hague System for the International
Deposit of Industrial Designs
• EUIPO: EU Design System
• definition of “design”
‘…means the appearance of the whole or a part of a product resulting from the
features of, in particular, the lines, contours, colours, shape, texture and/or
materials of the product itself and/or its ornamentation;…’
• SMK 55 (1)
• definition of “product”
‘… means any industrial or handicraft item, including inter alia parts intended to
be assembled into a complex product, packaging, get-up, graphic symbols and
typographic typefaces, but excluding computer programs;…’
• SMK 55 (2)
Can be 2D…
Can be 3D…
Examples
Examples
Examples
Two Requirements fof Protection
- novelty
- individual character
Novelty:
• New, if no identical design has been made available to
the public before the relevant moment of assessment
• identical ‘…if their features differ only in immaterial details.’
• relevant moment of assessment
• registered designs: filing date or priority date
• unregistered designs: date of first making available to the public
Making available to the public
• publication
• exhibition
• putting on the market
• or other ways of disclosing the design
Irrelevant disclosure
Grace period
by the designer herself as a result of acts in bad faith
(grace period of 12 months prior to (abuse during12 months prior to filing
filing date/ priority date) date/ priority date)
Individual character:
• Design has individual character if the overall impression it produces on
the informed user differs from the overall impression produced on such
a user by any design which has been made available to the public before
the relevant moment of assessment
• relevant moment of assessment
• registered designs: filing date or priority date
• unregistered designs: date of first making available to the public
the degree of freedom of the designer in developing the design is taken into account
CONCEPT OF ‘INFORMED USER’
- no designer or technical expert
- knows the designs in the relevant sector
- knows the individual design elements
- is particularly observant, either because of personal experience or extensive
knowledge of the sector
average technical
consumer expert
position between these two poles
CJEU, 20 October 2011, case C-281/10P,
PepsiCo/Mon Graphic
• informed user?
• kid of five to ten years
• marketing specialist dealing with these kind of
gadgets for advertising purposes
• informed user?
• waiter or sommelier
• private person using corkscrews at home
• informed user?
• person who often visits conferences
• concept of ‘freedom of the designer’
‘The greater the designer’s freedom in developing the
challenged design, the less likely it is that minor
differences between the designs at issue will be sufficient
to produce a different overall impression on an informed
user.’
Conversely, the more the designer’s freedom in
developing the challenged design is restricted, the more
likely minor differences between the designs at issue will
be sufficient to produce a different overall impression on
KwangYang Honda an informed user.’
2004 Application 2002 Registration
• during the normal use of the lawnmower, the user, who stands
principally behind the lawnmower, saw the upper side of the engine.
• the designer had a high degree of freedom in designing engines.
• First, no limit was imposed as to the shape of the upper side of those engines.
• Second, the components of the engine could be positioned differently without
altering the functionality or the aesthetic considerations
• the upper sides of both designs are similar in shape (rounded vents
with straight openings to the rear of the engine and “C” shaped fuel
tanks), and their respective components are similar in proportions,
arrangements, dimensions, layouts, sizes and shapes. these similarities
are more important than the differences in details that cannot have an
impact on the overall impression, since the informed user would be
guided by basic structures alone.
KwangYang Honda
2004 Application 2002 Registration
Excluded from protection
• Designs dictated solely by technical function
• or else other manufacturers would be excluded from producing that product
• Designs with official symbols or emblems
• Designs contrary to public order or morality
• Definition of «complex product»
‘…means a product which is composed of multiple
components which can be replaced permitting
disassembly and re-assembly of the product.’
Example
protection not only for the product as
such but also for component parts…
• specific requirements for component parts
• only novelty and individual character if
‘…once it has been incorporated into the complex
product, [the component part] remains visible during
normal use of the latter…’
• in this context, normal use
‘shall mean use by the end user, excluding maintenance,
servicing or repair work.’
Result of registration
• acquisition of exclusive rights
• term of protection: 5 years
• four renewals possible
• maximum term: 25 years
• without registration: 3 years
• as from the date of first making available to the
public
Scope of protection
Scope of protection
• overall impression decisive
The scope of the protection conferred by a design right
shall include any design which does not produce on the
informed user a different overall impression
Scope of Rights
• The right to prevent unauthorized copying or imitation by third
parties
• Exclude all others making, offering, importing, exporting or selling
product with the design
Kiddee Case (Accused Product)
Trunki Design
UK Supreme Court:
• global comparison should be carried out rather than focusing on the individual
similarities and differences between the two designs
• colour and ornamentation on the Kiddee Case (and lack of it in the registered
design) should be taken into account
• grey/black colour contrast between the various features on the Trunki Design
which is not present on the Kiddee Case should not be ignored
Trunki registered design was not infringed.
Registered vs unregistered designs
Registered design Unregistered design
• Registration required • Right available upon making the
design available to the public
• Protection up to 3 years
• Protection up to 25 years
• Infringement only if the design was
• Protected against both copied
deliberate copying and the
independent development of a
similar design