May 8, 2020
The strongest protection for a product is created by combining different forms of protection alongside a patent and a trademark. Design right, which protects the appearance of a product, or the appearance of its parts, is an affordable and quick form of protection that can be used to stop competitors before they even get started, says Kolster’s European Patent and Design Attorney Klaus Roitto.
In addition to a patent and a trademark, it is possible to protect your product or the appearance of a part thereof with design rights. With well-implemented design rights, a company can effectively prevent the presence of competing and infringing products on the market.
“A design right can be utilised as a sign of the manufacturer’s high-quality product to consumers and as a message of exclusive rights to competitors. As designing and creating a product takes time and money, it is unfortunate if a competitor brings a similar-looking but lower quality and typically cheaper product to the market. With design rights, a competitor can be stopped before they even get started”, says European Patent and Design Attorney Klaus Roitto.
A design right, which provides exclusive rights to a product’s appearance, can be used to prohibit others from utilising or using the same appearance in their products in the manufacture, sale, import, export and even storage of the products. The protection may apply to an item or only a part of it, such as the handle of a spoon, the ear of a cup, or even a part of a package, or the protective cover of a technical device, which gives the device its appearance. Logos or graphic symbols, such as the graphical views of a user interface, can also be protected with design rights.
A patent protects the technology, a design right the attractive appearance
“Often the strongest protection for a product is created by combining different forms of protection. For example, patent protection does not extend to the appearance of a technical solution. An aesthetically pleasing product can entice consumers to buy it rather than a competitor’s similar, less aesthetically pleasing product. Without a design right, copying the appearance of a product is generally legal”, Roitto says.
Protecting both the technology and the appearance of an invention is important, as copied products can have an unpleasant effect on the reputation and sales of the original product.
“If a competitor makes a similar-looking product, but from lower quality material, for example, and the product breaks easily in use, users will easily get a bad impression of the original product as well, even if it is durable and of good quality. Perceptions are hard to change afterwards.”
Affordable design rights are an obstacle for competitors
You should be quick with your design right application. Only in exceptional and rare cases is it possible to retrospectively apply for design rights for a published appearance. What may even happen is that a competitor applies for and is granted a design right for the same appearance, after which the original creator is in trouble.
“The threshold for applying for and obtaining a design right should be low compared to a patent, as the product does not have to be inventive and, in addition, applying for and maintaining design rights is affordable; the cost is only a fraction, typically perhaps one-sixth, of the cost of a patent”, Roitto says.
Design rights protection also complicates the position of competitors, as they have to make their own product different – without easy copying.
“In addition, design rights increase a competitor’s workload, since in the event of a possible dispute, the burden of proving that the design had been known before the filing date of the design right application and that the design right obtained would therefore be invalid falls on the competitor.”
Design rights are regional or country-specific, requiring separate applications. Design rights are typically applied for as an EU design application (application for “registered Community design”), in which case protection for the entire EU area is obtained with a single application in less than a week – at the same price as for a design application submitted in Finland alone, for example. A design right can be kept in force for 25 years, while the maximum protection period of a patent is 20 years.
Negligence and incompetence are the biggest threats to an application
In a design right application, the design must be given the correct classification, i.e. the classification corresponding to the product to which the design relates. It is particularly important to present the design, i.e. the product, in an adequate and correct manner in the design application.
“Design right applications for countries outside the EU must be filed separately by country. In addition, the criteria for applications and the requirements for having them accepted vary from country to country: for example concerning protectable subject matter, an integrated part of a product can be granted a design right in the EU area, but not in most countries, such as China”, Roitto says.
“It is worthwhile to seek help from a professional in preparing an application. In addition to the correct classification, the product must be presented in such a way that the appearance of the product is unambiguous from different angles and so that the protection acquired is as strong as possible.”
In a design right application, the appearance of the product, or its surface structure if the design relates to the appearance of the surface structure, is presented, for example, as line drawings or computer images (CAD images), or sometimes as photographs. The design may include colours.
“Care and competence are very important. For example, if the design is presented with photographs, they must not contain anything extra in addition to the design to be protected, since the final protection will typically apply to everything shown in the photo. In colour images, protection typically applies to the product only in that colour, meaning that there is a risk that a competitor may legally copy the appearance of the product in a different colour than the one in the images”, Roitto says.