Designs

A design refers to the appearance of a product resulting particularly from its shape, configuration, pattern, ornamentation, or any combination thereof. It may include features of lines, contours, colours, textures, materials, or surface decoration. Legal protection of designs ensures exclusivity in the visual and aesthetic aspects of a product, setting it apart from competitors and enhancing commercial value. By securing design rights, creators can significantly boost brand recognition, establish market differentiation, and strengthen consumer loyalty. 

The proprietor of a registered design possesses the exclusive legal right to prohibit third parties from manufacturing, importing, exporting, selling, or otherwise commercially exploiting products incorporating or substantially resembling the protected design without prior consent. Registration confers upon the proprietor the authority to commence legal proceedings to address and restrain any unauthorised use or infringement of their design rights. Additionally, registered designs can represent valuable commercial assets, enhancing the appeal of a business to investors and potential business partners. 

Certain jurisdictions, including the European Union, also recognise unregistered design rights. An unregistered design provides limited protection primarily against direct copying or unauthorised replication of the design for commercial purposes. Enforcement typically requires the proprietor to demonstrate intentional copying and substantial reproduction of the original design in the infringing product. Unregistered designs offer a cost-effective means of securing short-term protection, proving particularly advantageous in rapidly evolving industries where formal registration may not be economically feasible or practical. 

Subject to certain limited exceptions, the registration of a design is typically granted for an initial term of five (5) years from the filing date, which may be renewed for successive periods of five (5) years up to a maximum of twenty five (25) years, upon submission of renewal applications and payment of applicable renewal fees.  

The duration and enforceability of an unregistered design right depend on the jurisdiction. For an unregistered European Union (Community) Design, the validity is three (3) years from the date the design is first made available to the public within the EU. 

To be eligible for design registration, a design must satisfy two fundamental and cumulative legal criteria: 

(i) Novelty: the design must not have been disclosed to the public in any form or by any means, including but not limited to publication, exhibition, use, or otherwise made available before the filing date or the claimed priority date of the application. 

(ii) Individual Character: the design must produce a distinct overall impression upon the informed user compared to existing designs already publicly available. The assessment of individual character considers the nature of the product, the industry standards, and the degree of creative freedom available to the designer. A design with minimal differences from existing designs might not fulfil this requirement, while more significant creative variations typically indicate sufficient individual character. 

Additionally, designs must not contravene public order or morality, nor must they comprise purely functional elements devoid of aesthetic considerations. Registration is typically granted for specific products or product categories, and applications must clearly specify the goods or articles to which the design applies. 

To be eligible, a design must be new and possess individual character, meaning it must differ from existing designs and create a distinct overall impression on an informed user. The design must also be visible during normal use of the product and applied to a tangible or intangible item, whether industrially produced or handcrafted. Examples of eligible designs include furniture, packaging, fashion items, decorative patterns, and even digital elements like user interface icons. 

However, not all designs qualify for protection. Features that are dictated solely by technical function - such as the precise shape of a mechanical part necessary for it to work - are excluded. Similarly, designs that must be reproduced exactly to allow interconnection with other products (like standardized plug shapes) are generally not eligible. Internal components that are not visible during normal use also fall outside the scope of protection. Additionally, designs that are offensive or contrary to public policy, as well as those lacking novelty or distinctiveness due to prior disclosure, are not eligible. 

In short, design protection is reserved for aesthetic elements that are original, visible, and non-functional in nature, helping businesses safeguard the unique appearance of their products. 

A design is considered novel if no identical design has been made available to the public before the relevant filing or priority date. In this context, a design is regarded as identical to a prior design if the two differ only in immaterial details. Public disclosure can take many forms: publication, use in trade, display at an exhibition, or any other form of public availability, whether inside or outside the jurisdiction. 

Importantly, designers must be cautious about disclosing their creations before filing for protection. In the European Union, however, a twelve (12) months non-prejudicial grace period is available, allowing designers to file for registration within one year after their first public disclosure themselves or with their consent, without losing novelty. However, this grace period may not exist in other jurisdictions, making global strategy and timing crucial. 

If the design has been disclosed without the benefit of a grace period, or if it is found to be identical to an earlier design, protection will be denied or invalidated. 

In addition to being new, a design must also exhibit individual character in order to qualify for legal protection. This requirement ensures that protected designs are not only original but also visually distinctive within their relevant market. A design is considered to have individual character if it produces a different overall impression on an informed user compared to any design that has already been made available to the public. 

The concept of the informed user plays a central role in this assessment. This is not an average consumer, nor a technical expert, but rather someone with a degree of familiarity with the product category and a heightened sensitivity to design elements. It could be a design-aware consumer, a professional purchaser, or a user who frequently interacts with similar products and pays attention to visual features. This person is presumed to be observant and to notice differences in design that may not stand out to the general public. 

The evaluation of individual character is conducted in a holistic and visual manner, focusing on the overall look and feel of the design rather than isolated or minor differences. Small technical changes or superficial alterations are unlikely to suffice if the design still conveys the same general impression as earlier ones. The key question is whether the design, as a whole, looks clearly different to an informed user. 

In making this determination, authorities or courts consider a range of visual features, including the shape, lines, contours, colours, surface texture, and materials of the design. The importance of each element may vary depending on the nature of the product. 

Another important consideration is the degree of design freedom available to the designer. In sectors where functionality or industry standards heavily influence product form—such as medical devices, plugs, or automotive parts—design freedom may be limited. In such cases, even small variations can contribute to a different overall impression, and the threshold for distinctiveness may be lower. Conversely, in fields like fashion, furniture, or decorative arts—where creative freedom is broader—more significant visual differentiation is expected to satisfy the requirement of individual character. 

Ultimately, the requirement of individual character ensures that protection is reserved for designs that contribute something visually new and distinctive to the market, helping to maintain a balance between innovation and fair competition. 

Design protection is obtained through a formal application process, in which the applicant must submit a representation of the design, identify the product(s) to which the design applies (typically using the Locarno Classification) and designate the territory in which protection is sought. As with trademarks, the territorial scope may cover individual countries or regional systems such as the Benelux or the European Union. 

In the Benelux, design protection is granted exclusively for the entire Benelux territory (Belgium, the Netherlands, and Luxembourg). It is not possible to register a design for just one of the three countries; protection automatically extends across all three. Similarly, a Registered European Union (Community) Design provides unitary protection across all twenty-seven (27) Member States of the European Union. Partial or selective protection within the EU is not available under this system. 

Applicants register their design in their home country or region, or seek international protection. This can be achieved by filing an application under the Hague System for the International Registration of Industrial Designs, administered by the World Intellectual Property Organization (WIPO). The Hague System enables applicants to designate multiple member countries or regions through a single international application, streamlining the process of securing design protection globally. Alternatively, applicants may choose to file individual national or regional applications, depending on their commercial priorities and filing strategy. Where applicable, priority may be claimed from an earlier (first) filing, within six months, in accordance with the Paris Convention. 

In all cases, the scope and duration of protection depend on the laws of the designated jurisdiction(s), but typically extend up to twenty-five (25) years, subject to renewal every five years. 

In accordance with established practice under European design legislation, the examination of a design application is generally limited to a formal review by the EU Intellectual Property Office (EUIPO) or any of the national Intellectual Property Offices. This administrative process focuses on verifying compliance with formal requirements, such as the identity and details of the applicant, the appropriate classification of the product(s) under the Locarno Classification, and the inclusion of clear and accurate representations of the design. 

Notably, the EUIPO does not examine applications on substantive grounds, such as novelty or individual character, at the time of filing. These criteria are presumed to be met upon registration and are only assessed if the validity of the design registration is challenged, for example through invalidation proceedings initiated by a third party. 

Once the formal requirements are fulfilled, the design is registered and subsequently published in the Designs Bulletin, making it publicly accessible. From this point forward, the design right may be enforced against unauthorised use, subject to the assumption that the design meets the substantive requirements. 

As part of the application process, applicants of European Union (Community) Designs have the option to request deferred publication of their registered design for a period of up to thirty (30) months from the filing or priority date. When this option is exercised, the design still undergoes the standard formal examination by the EUIPO and, if all formal requirements are met, it is registered accordingly. However, the design itself is not published immediately and remains confidential during the deferral period. Only limited bibliographic information, such as the filing date, registration number, and name of the applicant, is recorded in the public register. To make the design public, the applicant must pay a separate publication fee at any point during the thirty (30) months period. If no request for publication is made within that timeframe, the registration lapses automatically, and the design is removed from the register. 

Deferred publication is particularly advantageous where the applicant wishes to delay public disclosure for commercial reasons, such as aligning with a product launch, seasonal collection, or broader market strategy, or because a patent application is being considered. However, it is important to note that enforcement of the design right is not possible until the design has been published, as third parties cannot be expected to respect a right that has not been made publicly visible. 

Importantly, unlike trademark law, there is no opposition stage prior to registration in European design proceedings. Instead, third parties who believe a registered design lacks novelty or individual character must initiate post-registration invalidity actions to challenge its validity. If no such challenges arise, the design remains registered for the full protection period, which can last up to twenty-five (25) years, subject to renewal every five (5) years. 

Unlike trademarks, design rights are not categorically confined to specific goods or services in the same way as trademarks are under the Nice Classification. That said, design applications in the EU must still indicate the products to which the design applies, using the Locarno Classification, an internationally harmonised system with 32 classes and numerous subclasses. 

The Locarno Classification is primarily administrative in nature. It helps with the organisation, searching, and examination of design applications but does not limit or define the scope of protection. In other words, while designs are classified for registration purposes, legal protection under EU law is not restricted to the listed class or product category. The extent of protection is determined by the visual features of the design and the overall impression it creates on the informed user. Not by the class under which it was filed. 

As such, similar designs may lawfully coexist, provided they do not produce the same overall impression, even if applied to similar products. Conversely, a design applied to different products - perhaps even in unrelated Locarno classes - could infringe if the visual similarity is sufficient to mislead or suggest copying, particularly where design freedom is broad. 

A crucial consideration in EU design law is the degree of design freedom in the relevant sector. Where designers enjoy broad freedom (e.g., in fashion or furniture), greater visual differences are required to establish individual character. In contrast, in sectors constrained by technical or industry standards, more modest variations may suffice to distinguish the design. 

Unlike trademarks, well-known or famous status does not grant a design any extended scope of protection across unrelated product sectors. While earlier designs - especially those widely recognised - may influence the perception of later filings, there is no equivalent to the Article 6bis protection for well-known trademarks under design law. Nevertheless, the reputation or widespread recognition of a design may be relevant in infringement or invalidity proceedings, especially where deliberate copying or unfair advantage is alleged. 

In conclusion, while the Locarno Classification provides a useful framework for structuring and indexing designs, it does not restrict the substantive scope of protection. Under EU design law, protection is defined by visual appearance, disclosure, and the overall impression on the informed user, rather than by the class or product indication provided during registration. 

European design law does not provide for a formal opposition procedure prior to registration. This means that third parties cannot object to a design application during the examination phase. Instead, once the design is registered and (if applicable) published, third parties who believe that the design was registered despite it lacked novelty or individual character, may initiate invalidation proceedings. 

Any party may file a request for invalidity before the EUIPO or the competent national authority, provided certain legal grounds are met. Common grounds for invalidation include, inter alia, that the registered design lacks novelty or individual character when compared to an earlier design or disclosure. 

Unlike opposition proceedings, invalidation actions are post-registration remedies, and they may be initiated at any time during the life of the design registration, not just within a limited window after publication. That said, successful invalidation will retroactively remove the design from the register, as though it had never been registered. 

If you believe a registered design does not meet the legal requirements for protection, it is advisable to act promptly, especially if the design is already in commercial use. 

European design law does not prescribe or require the use of specific symbols to indicate that a design is protected. However, rights holders may voluntarily use certain notices or markings to inform the public that a design is registered, which can serve both deterrent and evidentiary purposes in potential enforcement actions.  

The most commonly used symbol is D or Ⓓ or the phrase “Registered Design”, which may be accompanied by the relevant registration number and jurisdiction (e.g. “EU Registered Design No. 008765432”). 

While the use of such indicators is not mandatory under EU design law, they can be strategically beneficial. Notifying the public of a registered design may help to deter potential infringers by demonstrating the existence of enforceable rights, and in some jurisdictions, it may be relevant in assessing whether infringement was deliberate. 

It is important to ensure that any such marking is factually accurate. Using the term “registered design” or similar symbols for a design that has not been formally registered, or using the registration number in a misleading manner, may be considered deceptive. In certain jurisdictions, including within Europe, false claims of registration may give rise to administrative sanctions or unfair competition claims. 

By contrast, some non-European jurisdictions, such as the United States, not only allow but actively encourage marking registered designs. In the U.S., failure to mark a registered design may affect the ability to claim damages for infringement, whereas proper marking can strengthen a rights holder’s position in litigation or enforcement proceedings. 

In summary, while there is no legal obligation to mark registered designs in the EU, the careful and truthful use of design-related notices can serve a preventive and evidentiary function, and is often recommended as a best practice.