Protecting designs from imitation
Registered designs can offer a high recognition value for your company and make your external or product appearance unique. To avoid imitations, it often makes sense to have designs legally protected. In this article, you can find out exactly how to proceed and what is important when protecting designs.
What is a registered design?
A registered design protects the two- or three-dimensional appearance of a product or its individual parts. A product is understood to be any industrial or handicraft object, including packaging, equipment, graphic symbols and typographic characters.
Shapes (as part of the appearance) include, in particular, lines, figures, colours (or colour compositions), contours, materials or the surface structure of a product.
Computer programs, films, literature or music are generally not eligible for registration as designs. In these cases, copyright law generally applies.
Difference: Design, patent, trade mark, utility model
As patent attorneys and attorneys-at-law, we are often confronted with the question of the best ways to protect intellectual property: as a trade mark, patent, design or utility model.
The following differences should be noted:
- A patent protects an invention, i.e. a technical solution to a technical problem.
- The same applies to the patent's "little brother", the less expensive utility model.
- In contrast, the registered design is concerned with the appearance of the product.
- A name or labelling of goods or services can be protected as a trade mark.
One example of this is Coca-Cola: the name itself and the logo are trade marks. The typical shape of the glass bottle, the red colour and the typography of the lettering can be protected by a registered design. Certain manufacturing processes of the beverage are protectable as patents.
Under what conditions can a design be protected?
The following criteria must be met for a design to be eligible for registration:
- The design must be new: Novelty means that no identical or quasi-identical design has already been disclosed.
- It must have an individual character: The overall impression of the design must make it stand out significantly from previously known designs.
- The existence of novelty and individual character is not examined by the competent offices in Europe prior to registration. Therefore, this should preferably be ascertained with the support of a lawyer in a design search before registration in order to minimise legal risks.
Furthermore, a design is also not eligible for protection if its features are of an exclusively technical nature or if it is contrary to "accepted principles of morality" or public order.
The Design Protection Act
In its new form from 10 October 2013, the Design Protection Act (Designschutzgesetz, DesignG) regulates the criteria according to which a design is eligible for registration and which rights can be derived from design law. If a design is used by third parties, the owner can demand an injunction and, under certain circumstances, compensation.
If you register an existing design, you may also run the risk of infringing existing rights and becoming liable for damages. A design search is therefore essential in order to avoid lengthy and expensive legal disputes.
Things to know about the design search
When conducting a search, it should be borne in mind that the legal assessment of a design infringement is quite complex. It requires, for example, the determination of the scope of protection, which depends, among other things, on the previously known set of shapes.
The searches in the databases are therefore time-consuming and the legal assessment requires knowledge of current case law - especially in the case of complex products or if the product has a large number of technical features.
As a design attorney, we use specialised, often AI-based tools to support us in our searches. Thanks to our many years of experience, we can also draw on extensive expertise in dealing with legal and technical databases, which is necessary in order to obtain reliable results.
Checklist for a successful design application
To register a design securely and successfully, you should seek legal assistance. Our checklist provides a general overview of the individual steps:
- Define the design precisely:
Check what is particularly "valuable" about the developed design. Which features are new compared to the previous designs? Which ones particularly appeal to your customer? - Select classification:
When applying for a registered design, you must select the classes in which the design is to be registered. According to the Locarno Classification, there are 32 main classes and subclasses according to which differentiation is made. - Determine the territorial scope of protection:
It is now necessary to determine which states the protection should extend to. Is an application in Germany (DPMA) sufficient or should the design be registered EU-wide (EUIPO) or even worldwide (WIPO)? - Carry out a design search:
A comprehensive search should be carried out before filing the application. This serves to find out whether the design is eligible for protection or has already been protected elsewhere. This will prevent a possible legal dispute with existing rights holders. - File the application:
Only in the last step is the design actually applied for, either in Germany or at European or international offices. This is where the details of the design and the application data must be provided. Since the exact and correct representation of the subject matter of protection is very important, legal assistance is advisable.
This list is not exhaustive and in particular does not replace advice from a specialised lawyer. Please contact us directly for non-binding information.
These costs should be expected
If you want to apply for a registered design, it makes sense to consider the expected costs in advance. The costs depend on the scope of the property rights. Depending on whether you want a German, European or international design application, the costs are staggered accordingly.
As a rule, the official costs are rather low and range from 60 euros (Germany, online filing) to around 350 euros (EU design).
Further costs are incurred for the maintenance of the design ("renewal fees"). These are staggered as follows for a German application:
- 6th to 10th year: 90 euros
- 11th to 15th year: 120 euros
- 16th to 20th year: 150 euros
- 21st to 25th year: 180 euros
In addition, there are costs for filing, legal advice and an optional, preliminary design search, in which we check whether other designs stand in the way of an application. You can decide whether you would also like a legal opinion on the results of the search. The opinion then includes a detailed legal assessment of the legal situation and the market situation in the register with regard to possible conflicts.
We will be happy to provide you with a reliable breakdown of the costs. Contact us at any time without obligation.
Conclusion
If you want your company or product to be recognisable not only through its name and logo, but also through a special design, protection via a registered design is a good option.
This will ensure that there are no imitations on the market that could damage your reputation in the long term. Many successful companies aim to achieve precisely this by registering designs.