Lexicon > Designs and models
IP Lexicon
The design is defined by the 1st paragraph of article L.511-1 of the Intellectual Property Code as being :
“the appearance of a product, or part of a product, characterized in particular by its lines, contours, colors, shape, texture or materials. These characteristics can be those of the product itself or of its ornamentation. “
Paragraph 2 of the same article gives some illustrations of designs that can be protected:
“Any industrial or handicraft object, including parts designed to be assembled into a complex product, packaging, displays, graphic symbols and typefaces, but excluding computer programs, shall be considered a product. “
On the other hand, designs cannot be protected by design law:
- Contrary to public order or morality;
- Relating to a computer program (software);
- Whose characteristics are imposed exclusively by the technical function of the product;
- In which the shape of a product and its dimensions are imposed to be associated with another product so that each can fulfill its function.
The conditions of protection
Article L.511-2 of the Intellectual Property Code states that ” Only a design that is new and unique can be protected. “
- What’s new
Novelty is a condition for the validity of a design.
Article L.511-3 of the Intellectual Property Code states that “the following is to be noted A design shall be considered new if, at the date of filing of the application for registration or at the date of the priority claimed, no identical design has been disclosed. Designs are considered identical when their features differ only in insignificant details. “
The design is disclosed when it has been made available to the public by publication, use, or any other means (e.g., advertising, storefront display), on company brochures or documents distributed to the public, via publication on the social networks etc…).
As soon as the design is disclosed, it loses its novelty .
It is therefore important to keep one’s creations secret until they are first put on the market, regardless of the country of commercialization, just as it is recommended to perform a prior art search before filing.
However, this destructive disclosure must still meet the criterion of accessibility.
The article L.511-6 of the Intellectual Property Code establishes a presumption of disclosure when the design “There is no disclosure where the design could not reasonably have been known according to the usual business practice in the sector concerned. There is no disclosure where the design could not reasonably have been known according to the usual business practice in the sector concerned.
In this sense, a design presented to a third party under conditions of secrecy, whether implicit or explicit, will not be considered to have been disclosed .
- Own character
The article L.511-4 of the Intellectual Property Code provides that “A design has a distinctive character when the overall visual impression it produces in the informed observer differs from that produced by any design disclosed before the filing date of the application for registration or before the priority date claimed.
For the assessment of the specific character, account shall be taken of the freedom left to the creator in the creation of the design.
The courts consider that a design has a distinctive character when the overall visual impression it produces is different from that produced by any other previously disclosed design.
These potential prior art rights are in principle not limited in time and space, and can therefore go back to very early periods of disclosure throughout the world.
However, the disclosure must meet the criterion of accessibility (see novelty).
The notion of inherent character is a subjective notion, not defined by the law, and which implies analyzing the public’s perception of the appearance of the design.
Thus, the informed user, without being a technical expert, knows the designs existing on the market concerned and their attributes.
He is particularly vigilant because of his personal experience or his extensive knowledge of the market concerned.
Moreover, it is specified in the mentioned article that the specific character is assessed by taking into account ” the freedom left to the creator in the realization of the design “.
Thus, the greater the creative freedom, the less minor differences between designs will be sufficient to produce a different overall impression, and vice versa.
Registration of a design or model
A design can be protected for a period of 5 years, renewable for a maximum total period of 25 years.
In order to benefit from this protection, the design must, in principle, be registered with an intellectual property office (the INPI for French designs, and the EUIPO for European Union designs).
This filing must contain, in addition to the information that allows the identification of the applicant and the compliance with the substantive conditions, a number of views presenting the design (photographs, drawings, etc.) which must :
- Correspond to one and the same object;
- Make the product appear on a neutral background without shadows or reflections;
- Show only the product, without explanatory notes, arrows or any other element.
To maintain consistency, it is imperative that each image has only one view of the same product and that the appearance of the product is identical in each view.
Moreover, if the applicant wishes to keep his creation confidential, he can make registration with deferred publication.
This option allows to defer the publication of the registration for 30 months in France at the European Union level.
At the international level (via the WIPO), the period of deferment is the same for the Contracting Parties designated in the international registration that have made the declaration.
Otherwise, the deferral period is not allowed or is reduced to six months.
Finally, just as a trademark is registered for good(s) and/or service(s), the design must be attached to a category of product.
The applicant must define the product and assign a class and a subclass to it with reference to the Locarno classification.
Update on Council Regulation (EC) No. 6/2002 of December 12, 2001 on designs in the European Union
This regulation introduces a unified system of European Union design rights, throughout the European Union and operating within the national protection systems in each Member State, including France.
In order to protect a design, it is necessary to demonstrate that it is “new and has an individual character” (pursuant to Article 4.1 of the above-mentioned regulation).
Point of jurisprudence
In order to assess the destructive disclosure of novelty, it is necessary to first verify “if the elements presented in the application for a declaration of invalidity demonstrate, on the one hand, facts constituting a disclosure of a design and, on the other hand, the prior nature of this disclosure in relation to the date of filing or priority of the contested design and then you have to make sure, “In the event that the owner of the contested design has alleged the contrary, if the said facts could, in the normal course of business, reasonably have been known to the specialized circles of the sector concerned operating in the Union, failing which a disclosure will be considered without effect and will not be taken into account”. (EUIPO, February 27, 2020, Case T-159/19)
Point of jurisprudence
Accessibility is assessed independently of the number of people who could have been confronted with the design. Thus, there is no “quantitative threshold of actual knowledge of the disclosure facts” (General Court of the European Union, March 14, 2018, Case 651/16).
Point on the concept of informed observer
The informed observer must be understood as “an intermediate notion between the average consumer applicable to trademark matters, who is not required to have any specific knowledge and who generally does not make a direct comparison between the conflicting trademarks, and the man of the art, an expert with in-depth technical skills (ECJ, 20 October 2011, Case C-281/10).
Update on the concept of relevant audience
The audience to be considered is not necessarily the one for which the product is intended.
As an example, the informed user for a model of glass bottle representing an Eiffel Tower is certainly the regular consumer of tourist souvenirs, but also the souvenir store that markets these products (Cour d’appel de Paris, May 4, 2018, No. 17-18.095)
Point of jurisprudence
The degree of freedom of the creator can be assessed in particular with regard to ” to the characteristics imposed by the technical function of the product or of a component of the product, or the legal requirements applicable to the product to which the design is applied. These constraints lead to a standardization of certain characteristics which then become common to the designs applied to the product concerned. (General Court of the European Union, March 12, 2014, Case T-315/12).
Point on the double protection with the copyright
In France, by virtue of the principle of “ unity of art” , any product is likely to benefit, in addition to protection under designs, from protection by copyright, provided it is original.
Update on unregistered EU designs
Regulation (EC) No. 6/2002 of December 12, 2001 also provides for a specific protection regime for unregistered European Union designs for a period of 3 years from the first disclosure to the public.
Update on the number of views that can be deposited
While the INPI does not impose a limited number of views for the filing of a design, the EUIPO limits the filing to 7 views, and 3 additional views known as “reference” views, which are not protected, simply allowing the examiner to understand the use of the product.
Update on the Locarno classification
It is a design classification tool that includes:
- A list of classes and subclasses;
- An alphabetical list of products constituting industrial designs and their corresponding classes;
- Explanatory notes.
The Bouchara Law firm assists you in particular in :
- Prior art searches on the status of prior rights and prior art;
- Preparation and filing of designs in France and abroad;
- Monitoring the registration process;
- The protection and defense of your designs (infringement action, seizure procedure, unfair competition actionetc…);
- Management of your design portfolio (filing, renewal, registration, drafting of assignment and license agreements, collaboration agreements, etc.).
