Design rights

What we do

Design rights protect drawings and models of the physical form of an object. This often involves design drawings preceding actual production. Design rights are acquired the moment a drawing or model is registered with the Benelux Office for Intellectual Property or the European Design Office. Design rights are both time-bound (periods of 5 years with a maximum of 25 years) and geographically bound (meaning the right takes effect in the territory where it is registered). There are a number of requirements attached to the drawing or model before it qualifies for registration. The most important condition for eligibility for registration is that the model must be unique: that is to say, the model must be new and have individual character. Because this can often lead to disputes, it is advisable to engage legal experts during the registration process of the model or drawing.

A registered design right grants the exclusive right to use the drawing or model in commercial transactions. A design right can therefore represent considerable value. In practice, disputes regarding (alleged) design infringement arise regularly. Design infringement only occurs when there is a risk of confusion among the public. After all, the original design loses its distinctive character, and with it its economic value, the moment confusion may arise between the 'original' and the (partial) 'copy'.

We have the knowledge and expertise to assume diverse roles: from advice to dispute resolution. We have an experienced team of lawyers and legal experts in the field of design law. Contact us to discuss the possibilities.

What is design law and how does it relate to the broader intellectual property law?

Design law is one of the pillars of Intellectual Property (IP) law. While trademark law protects the origin and identity of a product and copyright creative works, design law specifically protects the appearance – the design – of a product or a part thereof: the lines, contours, colors, shape, texture, or materials. Think of the shape of a chair, the packaging of a product, a piece of jewelry, a textile pattern, or the casing of a device. In the Benelux, design law is regulated by the Benelux Treaty on Intellectual Property (BVIE); at the European level, the Community Design Regulation applies. For both the international group and the entrepreneur around the corner – the furniture maker, the design studio, or the baker with recognizable packaging – a well-protected design can represent significant economic value.

Requirements for protection: novelty and distinctive character

A drawing or model is only eligible for protection if it meets two core requirements. The model must be new : no identical model (or a model that differs only in insignificant details) may have been made available to the public prior to the filing date. In addition, the model must have individual character : to the so-called 'informed user', it must create a different overall impression than existing models. Furthermore, it is important to note that features determined solely by technical function cannot be protected under design law – patent law is the appropriate route for this. Have you already displayed a design, for example at a trade fair or in a webshop? Then a grace period (the so-called novelty deferral) of twelve months applies, calculated from the date of the first public disclosure, during which you can still file a valid application.

Registration: BOIP, EUIPO and the international Hague system

Protection of a registered design is achieved through filing and registration. You have various routes available, depending on your market. Through the Benelux Office for Intellectual Property (BOIP/BBIE), you obtain protection for the Netherlands, Belgium, and Luxembourg. Through the EUIPO, you register a Community design that is valid in all EU member states. For protection outside these areas, you can utilize international filing via the World Intellectual Property Organization (WIPO), the so-called Hague System. During the application process, the offices assess only formal requirements and not novelty or distinctiveness; therefore, registration is no guarantee that the design is valid. Precisely for this reason, it pays to have a legal assessment carried out beforehand to determine whether your design is genuinely sufficiently distinctive.

The unregistered Community design

Not every design needs to be registered to enjoy any protection. As soon as a design is made public for the first time within the European Union, an unregistered Community design arises by operation of law. This right is free and automatic, but has two important limitations: it lasts only three years (and is not renewable) and it only protects against the deliberate counterfeiting (copying) of the design. If a competitor brings a similar design to the market on their own initiative, without any copying taking place, you are left powerless. For products with a short life cycle – fashion, seasonal items – this may be sufficient; for designs in which you invest for the long term, a registered design is almost always wiser.

Duration and scope of protection

A registered design is protected for a period of five years from the filing date. The registration can be renewed for periods of five years at a time, up to a maximum of twenty-five years. The protection is limited both in time and geographically: the right is effective only in the territory where it is registered. The scope of protection extends to both two-dimensional design (patterns, drawings, graphic designs) and three-dimensional design (furniture, appliances, packaging, jewelry). A registered design right grants the holder the exclusive right to use the design in commercial transactions and to prohibit third parties from doing so.

Infringement and enforcement

Infringement occurs when another design creates the same general impression on the informed user as your protected design. If you detect counterfeiting, our lawyers and legal experts can handle the entire process for you: from a substantiated cease and desist letter as the first step, through summary proceedings when urgent intervention is required, to full proceedings. Possible claims include an injunction against infringement subject to a penalty payment, damages or surrender of profits derived from the infringement, and the destruction or recall of infringing products. Are you being sued yourself for alleged infringement? We will assist you in that case as well, for example with a defense arguing that the invoked design is void because it lacks novelty or individual character.

Concurrence with copyright, trademark law, and slavish imitation

The design of a product can be protected simultaneously through multiple avenues. In addition to design rights, a design can also be protected by copyright if it has a distinct, original character; that right arises automatically and requires no registration. A shape that functions as an indication of origin can, under certain circumstances, be protected as a shape mark through trademark law . Furthermore, those who no longer hold registered design rights can sometimes still take action on the grounds of slavish imitation , a form of unlawful act under Article 6:162 of the Dutch Civil Code. We map out for you which rights can be applied cumulatively and which strategy holds the strongest position.

Our approach: from international corporation to the entrepreneur around the corner

MKB Juristen works with mixed teams of lawyers and (in-house) legal counsel. This means being strategically and procedurally sharp when a dispute escalates, but equally practical and cost-conscious when you only want to know whether your design is registrable or how best to build your design portfolio. We advise multinationals with an extensive design portfolio as well as the independent designer looking to register their first design. Whether you are an international corporation or the baker on the corner with a recognizable product shape: we make design law understandable and usable.