The most obvious IP right for the fashion industry seems to be the design right. As you have already learned in the previous article on the intersection of patents and fashion products, garments can have both an aesthetic effect and be the result of an inventive step. The aesthetic effect is protected by design law, while the invention is protected by patent.
What is design law?
Design law protects the aesthetic impression of a product, i.e. its external appearance. It grants its right holder the exclusive right to commercial use and exploitation of the product. The owner of a design can therefore prohibit third parties from using his design and grant licences to his design. If the design is registered with the European Union Intellectual Property Office (EUIPO), this protection even applies throughout Europe. You are therefore the only person who is allowed to sell the garments with this design. Design law thus primarily offers protection against imitation.
How is it acquired?
Design rights can be acquired in various ways. On the one hand, by application and registration with the competent office, either as a nationally registered design or as an EU Community design. (A design in the legal sense used to be called a design patent.) In these cases, one must go through an official registration procedure. The German Patent and Trade Mark Office (DPMA) or EUIPO then examines whether the design meets the relevant requirements and publishes the registration. After registration, you officially acquire the protective right for your design for a maximum of 25 years. It is not possible to extend the term of protection. In addition, a design can also be registered internationally for those member states according to the Hague Model Agreement (HMA) that are named in the application. The international office of the World Intellectual Property Organization (WIPO) then processes this international (not automatically worldwide!) application.
Another way in which the design right comes into existence is through mere “disclosure”, i.e. when the design is first published within the EU. We are then talking about unregistered Community designs, which means that you do not have to go through an application procedure.
When can we assume that the design has been “disclosed”?
The central concept in unregistered designs is disclosure. A design is disclosed when it has been made available to the public. The way in which this happens is initially irrelevant. For example, it may have been exhibited, offered or promoted by an advertising campaign/article in the media. The presentation of a design to potential buyers or in design competitions may be sufficient. It is only important that there is a publicity effect associated with it, so that it could be known to the professional circles operating in the (European) Union in the normal course of business. The presentation at a major well-known fashion fair in Milan, for example, is likely to be one of the events noticed by the professional circles in the fashion sector.
Further requirements for design protection
The design must fulfil two requirements in particular: It must be “new” and have “individual character”. Only under these conditions can the design right be given.
The design is new if no identical design or design differing only in insignificant elements has been marketed, exhibited or otherwise made available to the public before the filing date with the competent office (or in the case of non-registered designs: before “disclosure”).
Novelty” is to be understood objectively: All earlier designs are to be taken into account, regardless of whether they were known to the designer or not. However, this is subject to one restriction: as already mentioned above in the context of “disclosure”, only those designs are to be taken into account which could have been known to the circles specialised in the field in the Community. The possibility of knowledge may also arise from acts of disclosure abroad.
On the designer’s side, there is a grace period of twelve months for registered designs. The designer of the design has the opportunity to make his design available to the public 12 months before filing the application, without this damaging the “novelty” of his design to be filed later and thus shooting himself in the foot. The designer is thus given the opportunity to assess the market success first.
The second prerequisite is the so-called individual character of the design. No impression of “déjà vu” should be triggered in the informed user (of the design). The overall impression must be different from that of already known designs. In the case of a very high design density in a certain field, this limits the designer’s freedom of design somewhat. However, this in turn means that even relatively minor differences can lead to a sufficiently different overall impression.
In the case of a design application, however, the above-mentioned requirements for design protection are not automatically checked in order to get the “green light” for a design right from the Office. In contrast to trade marks, where the Office first checks whether there are any “absolute grounds for refusal” that could stand in the way of registration before registering the trade mark, in the case of designs the Office only checks the most important formalities and regularly registers the design first. Only if third parties subsequently raise objections against the registration, e.g. questioning the novelty or individual character or that there are already other earlier conflicting protective rights, will these obstacles to protection be examined in nullity proceedings at the Office or in infringement proceedings before a court. It may then be that, despite registration, there is no design protection from which rights can be derived.
Conclusion
The advantage of a registered design is above all that a design right can be registered relatively inexpensively and without complications. The office first only roughly checks the formalities and then you can call yourself the owner of a design right. However, there is always a certain amount of uncertainty involved, because the right is still “open to attack”. However, you should not be put off by this: if you inform yourself well beforehand and have the novelty/character of your product checked in advance (e.g. by specialised lawyers), then it is not a risk. A registered right has a certain intimidating effect on potential imitators or other infringers.
The unregistered Community design, on the other hand, can serve as a “fall-back option” and secure rights in the fast-moving fashion market where the registered design right as a “right of registration” is not yet able to keep up with the constant change in the fashion industry.
Author: Olivia Wykretowicz