Protection of product designs: the assessment of individual character in design law

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Product design is an important tool for many companies to position themselves in the economic field. In the design of creative products, the registration of the design can offer protection against, for example, imitation or the marketing of very similar products (provided that the design is not solely of a technical nature).

Protected design

To be able to invoke an EU design registration against third parties:

  • the design should be ‘New’
  • the design of the product must meet the ‘novelty’ conditions

In this article, the relatively abstract notions of “novelty” and “individual character” will be examined in more detail, partly in the light of a recent judgment of the General Court, in which a more precise explanation was given of how appreciate the individual character.[1]

Novelty and individual character are minimum requirements for design protection. The novelty requirement relates to whether an identical design has already been made public. This seems like a relatively simple control in theory, but in practice this requirement can be a hindrance. After all, how do you get full clearance for what has already been marketed or published elsewhere? Incidentally, in the EU a so-called grace period of one year applies. This means that a design already disclosed to the public or published elsewhere can still be registered as a valid design within one year of its publication.

The role of the EUIPO

When applying for the registration of a design, the European Union Intellectual Property Office (EUIPO) does not itself check whether the design is legally new and of individual character. These criteria are therefore not assessed upon receipt of an application for registration of an EU design. It is up to third parties to challenge the validity of a design registration, for example by initiating a so-called revocation procedure against the existing design registration.

1. Discussion point: individuality of a product design

A point of discussion is often whether a design has a supposedly individual character. A design or model is deemed to have an individual character if the overall impression it produces on the informed user differs from the overall impression produced on that user by any design or model made available to the public. The evaluation is based on the overall impression of the design. Is it sufficiently different from the general impression created by the existing drawings or is it a similar “déjà vu impression”? Design law does not require the presence of a likelihood of confusion between product designs, which is an essential criterion in trademark law.

2. Discussion point: Different overall impression

When is it a “different overall impression”? An important factor is whether the designer has a lot or little design freedom when making creative choices. In the case of limited leeway to make free choices (for example, due to certain industry standards), minor differences may suffice to meet the individual character requirement. However, if there is plenty of room for creative choices, the bar is set much higher and the differences should run much deeper. In this case, the designer must make an increased effort to deviate from existing designs, or at least from a legal point of view.

3. Talking Point: Industry Trends

Now, of course, it may be that in a certain industry, a certain trend can be seen in terms of product design. Consumers and buyers simply expect a certain (standard) design, on the basis of which it can be deduced that very minor deviations should be enough to be able to speak of an individual character. After all, from a business point of view, a certain standard design must be developed, because consumers or buyers expect it. The question is whether this argument can be sustained from a legal perspective, or whether commercial considerations play no role in determining creative freedom.

Product Protection Example: Design Registration Judgment for “Building Panels”

In a recent judgment of the General Court, the key question was, inter alia, whether the existence of a certain trend restricted the freedom of the creator to some extent. If this were the case, less effort would be expected from the designer, thus lowering the threshold for an individual character deemed to be present.

The judgment in question concerned a design registration for “building panels” (see the design images below). A competitor of the proprietor of the relevant design registration argued that the registration was invalid, on the basis of which a request for revocation was made.

The key question was whether this design had an individual character compared to an existing design. For example, reference has been made to the design below which has been applied to a noise barrier.

In particular, the defense of the design owner was that the designer’s degree of freedom in this specific sector is very limited and even a certain trend can be observed within the industry. The applied (minimal) differences compared to the old design should, given this limited freedom of the designer, be sufficient to be able to speak of an individual character. These differences, it was argued, consisted primarily in the alleged dimensions, inclination and proportions of the various elements of the conflicting designs.

The Court considers that the freedom of the creator is not restricted by the existence of a possible trend within a particular industry. Within the freedom of design provided by design law, the designer is expected to create sufficient distance from existing designs, despite the existence of a possible trend. It is up to the creator to innovate in an existing trend.

Therefore, when considering the individual character of a design, the existence of a certain trend or a general trend within the industry is not relevant. In other words: the examination assesses whether the overall impression of the design differs from the designs and their impression previously disclosed, regardless of aesthetic or commercial considerations.

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