DESIGN PROTECTION
registered Design
The object of this registered property right is formative development work. The protectable design is a two- or three-dimensional appearance of products or parts thereof.
Important areas of protection are covered by the registered German design, the registered and the unregistered European Community design and the Intermationally Registered Design.
Detailed information on the most important protective rights can be found in a bundled form in our information brochure.
Is this art? Or is it a protected design?
In contrast to copyright protection, it is not necessary to have created a work of art in order to obtain design protection - although a design-capable creation can also achieve the character of art.
A design can protect the results of creative work in terms of the shape and colour of reproducible products. It is therefore mainly concerned with designs that are reproduced in large numbers in the manufacturing process, i.e. copied essentially identically from the original sample. Typical examples of such products are:
- furniture
- Car bodies
- Substances
- Floor coverings
- Device housing
- Toys
- Screen masks
We advise you on whether a design developed by you can be protected as a design and how best to proceed. In doing so, we also check, for example, whether the protection can be optimised by filing a multiple application from numerous variations of your design.
Search for the treasure trove of forms
Since the novelty of a design is also a prerequisite for protection, it may be useful to conduct a search before filing an application. For this purpose, for example, the databases of registered designs must be searched for comparable designs. The drawings and photographs stored there cannot be reliably found by search engines so far, so that a lot of manual evaluation is necessary, which quickly increases the effort. Many applicants therefore forego a search and bring newly created designs to the application immediately.
If you want to get an overview of the registered German designs, you can search the DPMA register yourself free of charge.
Instead, a detailed search will be necessary if, for example, you have to prove that the design claimed against you is not legally valid on the basis of pre-published designs in order to defend yourself against an infringement allegation.
Register the design CORRECTLY
Together, we find the features of your design that can be protected by the design and show you how to focus the application on these aspects. The goal is the optimal protection against imitations.
Although the tools and information provided by the DPMA basically enable even laypersons to file a design application without legal assistance, there are still numerous problems and pitfalls that we would like to save you from. As the DPMA does not examine the content of the design, there is a high risk that the untrained person will receive a certificate of registration of the design applied for, but in fact will not have an efficiently enforceable IP right. Corrections with regard to the subject matter of the application cannot be made later.
Therefore, the following questions, for example, are of particular importance in each individual case:
- Should searches be initiated in advance?
- Which illustrations (photos/graphics) are filed with the Patent Office?
- Is the product shown in colour or black and white?
- Is a single or multiple application preferable?
- Should a request for deferment of publication be filed?
- Is a complex product represented in its entirety or in its individual parts?
- How can the resulting scope of protection be maximised?
The DPMA has prepared a helpful brochure on design protection for applicants.
Obtaining registration of the design
In registration proceedings before the competent patent and trademark offices, we act as the applicant's representative. We comment on possible decisions of the Office and show you options for the correct procedure in order to achieve a registration with optimum scope of protection in these cases as well. If necessary, we also use the appeal procedure to obtain registration of your design and thus protection.
Initiate invalidity proceedings
If you are of the opinion that a foreign design should not have been registered, we will conduct the necessary proceedings for you to have it declared invalid.
Invalidity proceedings can be initiated at the DPMA against a German design. As a result of these proceedings, the contested design will be declared invalid, in particular if the design was not new or did not have any individual character at the time of filing the application. However, there are further grounds for invalidity which are mentioned in Section 33 DesignG.
Conduct infringement proceedings
Property rights are only valuable if they generate an economic benefit. Therefore, we regularly advise our clients to acquire property rights where at least the potential for such use is apparent. This goes hand in hand with the enforcement of an intellectual property right against third parties, if necessary, if they use the object of protection without authorisation.
Prior to a legal enforcement, which we already regard as the final resort due to the ever remaining risks, there is always the attempt to achieve compliance with the property right by way of an agreement. Disputes concerning industrial property rights therefore often begin with a reference to the industrial property right or a warning. In many cases, the claims of the property right owner can be enforced in this way. If necessary, a license agreement can also result from which both sides benefit.
Of course, we also represent you in reverse constellations, because there are always cases in which property right owners unjustifiably demand the omission of business activities which, on closer inspection, do not encroach upon the scope of protection of the property right asserted.
Frequently asked questions about design protection
YES.
In the past, the protection granted to the designer was limited to prohibiting imitations of the protected design. Parallel designs created by third parties without knowledge of the protected design were not covered by the protection.
Today, however, the registered design grants absolute protection against the distribution of products whose overall impression on the "informed user" is the same as that of the protected design. The first applicant for a novel design is thus certainly protected against later imitations and parallel creations, since he can prohibit their distribution. The effects of the design in terms of design results are therefore comparable to the effects provided by a patent for technical development results.
The design can protect two- and three-dimensional manifestations of products or parts thereof. The characteristics of such products are defined by lines, contours, colours, shape, surface structure or materials.
A design application is filed by filing illustrations which must show all essential design features.
Ultimately, the following applies: What is protected is what can be seen in the illustrations. If features are missing, they cannot be used to determine the scope of protection. If things are depicted which do not necessarily belong to the design, this can lead to an unintentional limitation of the protection.
The protection of the design is essentially determined by the features shown on the illustrations filed with the patent office with the application. Unlike a patent, no abstraction can be achieved by verbal description of the features, although a brief explanation of the design can be filed with the application. The most frequent mistakes are therefore made in the selection of the illustrations or the elements of the object to be protected which are to be shown there.
We will be pleased to advise you on the possibilities of representing the relevant features and how, for example, an extension of the scope of protection can be achieved by skilfully combining several designs in a multiple application.
YES.
In most countries, it is possible to apply for national industrial property rights that are comparable to German design.
For design protection in the European Union, there is a registered community design which is effective in all member countries and can be obtained quickly and inexpensively by means of a registration procedure. What is often overlooked is that there is also an unregistered community design which is also effective in the entire EU, which can be created without formal steps simply by publishing the design and then grants protection against imitations for 3 years.
In order to obtain design protection in countries outside the EU, it may be appropriate to access the procedure under the Hague Design Convention. With an application filed with WIPO, a right equivalent to the national protection right in the contracting countries can be acquired.