Design Law

Registered Design (Industrial Design)

A registered design can protect your product’s aesthetic design from imitations.

Design Protection

A registered design grants the owner of the design the sole right to manufacture, use and market the products that incorporate or apply said design, limited to maximum period of 25 years.

A registered design protects the subject matter visibly reproduced in the design application. A product falls within the scope of protection of a design patent, provided it produces the same overall impression on the informed user as the subject matter presented in the application.

The term “Geschmacksmuster” [industrial design] was used in German law until December 31, 2013 instead of the term “eingetragenes Design” [registered design]. To date, the term “Geschmacksmuster” is still used in the official German translation of Council Regulation (EC) No. 6/2002 of December 12, 2001 (Community Design Regulation). In fact, a “registered design” and an “industrial design” are identical.

The path to a registered design

To obtain effective protection in Germany, a German design application must be filed with the German Patent and Trade Mark Office (GPTO) or a Community design application (EU design application) must be filed with the European Union Intellectual Property Office (EUIPO).

Design protection is restricted by territory.  In most cases, we recommend that our clients file a Community design application to EUIPO for Europe-wide protection.

The Hague Agreement concerning the international registration of industrial designs is a way to obtain protection in a number of European countries (including Germany) and non-European countries through registration with the World Intellectual Property Organization – WIPO. The most important non-EU countries of the Hague Agreement are the USA, Japan, Switzerland, Egypt, Serbia, Singapore, Tunisia, Turkey and the Ukraine.  

Our attorneys are authorized to act for and on behalf of clients at the GPTO, the EUIPO and the WIPO. For many years we have also cooperated with selected foreign attorneys in all important countries around the world.

Both the GPTO and EUIPO conduct only one examination of the formal requirements. Neither the GPTO nor the EUIPO examine whether the conditions for protection for a legally valid registered design are met.

Protection requirements

The registered design protects the aesthetic design of a product, for example its color and shape. In principle, the aesthetic design of all products can be protected. Protection extends both to two-dimensional creations such as materials or logos, as well as to three-dimensional aesthetic creations.

The requirements for establishing the legal validity of a registered design are novelty and individual character compared to the relevant wealth of forms. A design has individual character if the overall impression the design makes on the informed user differs from the overall impression that another design makes on the informed user.

A component part, which is part of a complex product, may also be protected by a design patent. However, the protection requirements of novelty and individual character are only considered fulfilled for this type of a component part if the component part, when used as intended, remains at least partially visible and the visible features of the component part itself meet the requirements of novelty and individual character.

However, appearance features of products and “must fit” appearance features that are exclusively determined by the technical function are excluded from design protection, meaning features of a design that must necessarily be reproduced in their exact shape and dimension in order for them to be assembled with other products. 

On the other hand, “must match” appearance features, i.e. appearance features of products which must be reproduced so that a component part matches another product aesthetically, are not excluded from protection per se. However, under certain circumstances, the use and offering of such parts for the purpose of repairs cannot be prevented. 

Period preclusive of prejudice to novelty

To assess novelty and individual character, the third party designs as well as presentations of one’s own designs must be considered. However, a twelve-month period preclusive of prejudice to novelty applies. This means that one’s own presentations made in a period of maximum 12 months prior to the filing date are not considered when assessing novelty and individual character.

Drafting of design applications 

The subject matter visibly reproduced in the design application is protected by means of a registered design.

In addition to the question of which perspectives are appropriate for the presentation, the question of the type of presentation is also important (photographs, line art, computer-generated images). In some countries, e.g. in the USA, the guidelines that must be followed for each type of presentation are very specific.

On a case-by-case basis, we assess for our client whether a design application should focus solely on one design or whether the registration of several different designs is appropriate, e.g. also within the framework of a multiple application.

We prepare the design application for our clients and file it to the agreed office(s), in which case we discuss with our client which is the most appropriate type of application, including the question of the product presentation and, if applicable, the submission of a multiple application with several designs as well as the desired territorial coverage. 

Priority

If the corresponding application is an initial application, within a priority period of six months as of the application date the priority of the initial application can be claimed for subsequent applications worldwide in virtually all economically relevant countries. This means that the subsequent application is given the same priority as the first application.

Unregistered Community Design

In addition to the registered design, the Community Design Regulation also protects unregistered Community designs. Protection of an unregistered Community design ends after a period of three years as of the date of its first presentation.

Unlike the registered industrial design or registered design, unregistered Community designs only protect counterfeit products and intentional parallel developments.

Even if we do not counsel our clients to rely on the protection of an unregistered Community design, during consultation, we also consider the option of taking action against counterfeit products based on unregistered Community designs.

Searches

In determining the scope of protection, the designer’s or inventor’s freedom of design must be taken into account. Therefore the scope of protection of a registered design also depends on its distance from the previously known wealth of forms.

We conduct both internal searches as well as searches in cooperation with service providers specializing in searches for earlier designs of certain competitors as well as for a wealth of forms.