Protecting your intellectual property rights – design or patent?
A recent EU General Court (EGC) decision confirms the distinction between protection regimes provided by the design and patent systems.
Intellectual property (IP) right owners sometimes question whether they should protect their product with a design in addition to applying for a patent. This is because patents are hard to obtain, and the process can take several years. A patent is granted for technical innovations for up to 20 years and registration involves stringent examination procedures which can prove costly. The design or registered design is for the appearance of a product and because it does not involve a formal examination process it can be easier and quicker to obtain. The design lasts for up to 25 years, although it must be renewed every 5 years.
Definitions for the design and patent systems are provided under the Community Design Regulation (EC) No 6/2002 (‘CDR’). Provisions under Article 8 of the CDR draw a distinction between the two systems so that design protection is not granted for features that are solely dictated by their function (where patent protection would apply instead). This is intended to prevent the monopolisation of technical innovation outside of the patent system. Even though we have left the EU these distinctions still apply to the UK Intellectual Property Office (UKIPO) regime. They will also be relevant to those seeking protection of ‘community design’ within an EU country and for other international registrations. Further guidance on how to register a design via the UKIPO is available here. Guidance on how to apply for European or other international design protection is also provided here.
The meaning of Article 8 CDR has been widely disputed, so the ECJ gave further clarification in the 2018 DOCERAM judgment. Here the determining factor in deciding if a product is dictated by a technical function, is whether the technical function is the only factor that led a designer to choose a particular appearance of a product, while other considerations, in particular the visual appearance of a product, played no role in the choice of that feature.
The recent case of Unger Marketing International, LLC v European Union IPO (T-325/20) applies these principles. Here, the General Court upheld an EU Intellectual Property Office Board of Appeal decision ruling that a design for a water purifier was invalid because all five features of the products appearance were dictated solely by their technical function. Having looked at all the circumstances, they found no evidence that aesthetic considerations had played any part, despite the designer arguing that the existence of alternative designs was proof of a creative element in the choice of features. Their argument was rejected by the ECG as insufficient and not aligned with the intention of Article 8 CDR.
Such cases are a timely reminder for IP right owners to ensure that they can justify the basis for their design application. Although designs do not undergo substantive examination in order to be registered, it remains the responsibility of the owner to be able to evidence that other design considerations have played a role in the selection of a design, in addition to technical considerations. Without this the registered design is still open to being cancelled via a declaration of invalidity. It is therefore important to keep documentation relating to these considerations as part of the product development process.
Those seeking to register a design should also consider if it contains a feature that could fall within an Article 8 CDR exclusion. For example, this includes a privilege for designs which serve the purpose of enabling the assembly or connection of mutually interchangeable products within a modular system. (This led the ECG to reject the Board of Appeal’s decision to cancel the Lego Bricks community design in 2021). There are also exclusions which prevent manufacturers with products with connecting elements from preventing competition with substitutional products which fit the incorporating product e.g., printer cartridges.
It is therefore advisable to seek specialist legal advice regarding the potential limitations to the design versus patent system relative to your product, to determine which is the most appropriate form of protection and what next steps need to be taken. If you would like further information on this topic, please contact Susan Wells as [email protected].
Alistair Wilson, Trainee Solicitor