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    How to protect your investment in creativity?

    Do you know what unites a musical instrument, a chocolate candy, a bottle, a type font for a clock, an image, a packaging for cookies, an icon/graphical symbol, a cheese packaging, a logo and - let's say - a personage?..

     

    Despite their obvious differences, all of them have something in common. They are examples of registered intellectual property objects - registered designs. 

     

    What is a “design”?

     

    Legally speaking, a design is defined as:

    • 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.

     

    So as potential design objects to register, one would immediately think about different packages, diverse forms of products (like, for instance, very recognisable kitchen utensils of Alessi brand), or countless decorations. Yet, this is by no means an exhaustive list. 

     

    As designs, one could also register, among others, also computer icons, graphical interface, webpage screen layouts, fonts, and many more other results of creative efforts. 

     

    What are the requirements to register a design? 

     

    To be eligible for protection, the design has to fulfil two legal requirements: 

    1. novelty and 
    2. individual character

     

    Thus, if the design is new, not previously disclosed (or at least disclosed not longer than 12 months ago), and has a “design step” obvious to the informed user, then such a design could be registered. 

     

    In addition to the two main legal criteria mentioned the design must also not be solely dictated by the function of the product, nor be the design of an interconnecting feature, nor finally, be contrary to public policy or morality. To note that according to the case-law of the European Union Intellectual Property Office (EUIPO), it is sufficient if at least one of the features of the design is not dictated by the technical function. 

     

    The above-listed requirements are not as stringent as the patentability requirements for inventions. Besides, to qualify for design protection there is no requirement of distinctiveness like the one existing in respect of trademarks. 

     

    Therefore, due to its peculiarities, design protection could be a very interesting addition to the overall intellectual property portfolio of a company. 

     

    What rights does the owner of the registered design have and where?

     

    Like with all industrial rights, also the registered design gives its owner the exclusive right to use and to prohibit third parties from using identical or similar designs. 

     

    Therefore, only the respective owners of registered designs have the rights to: 

    • use, make, offer, put on the market, import, export or stock products incorporating the protected design (or design that does not produce a different overall impression).

     

    The protection is granted for a period of five years with the possibility of extending it four times. Thus, the maximum total duration of protection possible for a registered design is 25 years. 

     

    The design can be registered via the national, European or international route, which determines respectively the territorial scope of protection. For example, the designs in the very beginning of this article are registered in Benelux, while the examples of screen-related designs are Registered Community Designs, valid in all countries of the European Union.

     

    Can different intellectual property rights be applied at the same time?

     

    Provided that different requirements, existing for different intellectual property protection mechanisms, are met, the design could benefit from a bundle of rights.

     

    For example, a 3D shape theoretically could be protected as both a trademark and a registered design. However, getting design protection would probably be much easier. To get a 3D shape registered as a trademark it would need to have a distinctive character either by nature or use, capable of distinguishing goods or services of one company from those of the other. This is nothing but simple. A possible strategy could be to start with the registered design to ensure the protection is established, and then through extensive use, acquire the necessary distinctiveness to qualify for trademark protection. 

     

    Also, copyright and fair trade practices could be used to strengthen the protection of a design. Nevertheless, the registered design remains the best option to obtain relatively wide protection for the results of someone’s creative efforts. Besides, if a company has registered designs, it clearly signals both to the potential investors as to its partners, competitors and customers the seriousness of its business. 

     

    To conclude, there are many mechanisms available to protect the results of your creativity — your intellectual assets. Some of them will be more fitting with your strategic goals, or perhaps easier to obtain. Sometimes a step-by-step approach is required. In any case, in order to ensure that your intellectual assets are protected in the best possible way, it is essential to address this issue in advance and with a knowledgeable IP specialist. Then you can be sure that your intellectual assets are officially yours and are duly protected. 

     

    Are you ready to build a bullet-proof IP strategy for your company?

     

    Then reach out to us at Starks

     

    Starks. If the best is your minimum standard. 

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