A design is defined in the EU Design Regulation and in the Design Directive as the appearance of the whole or a part of a product resulting from the features, in particular the lines, contours, colours, shape, texture and/or materials, of the product itself and/or of its decoration, including the movement, transition or any other sort of animation of those features. In order to qualify for protection, designs must be new and must have individual character. Furthermore, a design shall not subsist in features of appearance of a product which are solely dictated by its technical function. Designs make a product attractive and appealing; hence they may add significantly to the commercial value of a product and increase its marketability. Design protection is a significant element of IP law. Designs as unique creations with individual character require and deserve protection against imitators just like copyrighted works or trademarks.
1. Requirements for design protection in Europe
Design law in Europe consists of European Union design legislation providing for registered and unregistered Community designs, governed by Council Regulation (EC) No. 6/2002 of December 12, 2001 on European Union designs (EU Design Regulation – EUDR) and national design laws in the 27 Member States of the European Union, as to a substantial degree harmonised by Directive (EU) 2024/2823 of the European Parliament and of the Council of October 23, 2024, on the legal protection of designs (recast) (Design Directive). EU designs are administered by the European Intellectual Property Office (EUIPO), located in Alicante, Spain, which also administers the European Union’s trademark law. In this presentation, we will cover European and German design law.
Key requirements for design protection in Europe are “novelty” and “individual character” as established under Article 5 and Article 6 EUDR, and in the parallel provisions in the Designs Directive. For establishing novelty, the new design needs to vary in more than just “immaterial details” from other existing designs. Whether or not it has individual character depends on whether the design, compared to earlier designs, creates the same impression on the “informed user” overall. This imaginary user is a person with knowledge of designs in the applicable field of activity. In contrast to trademark cases, where the average consumer will compare the asserted mark with other marks they have in mind (“imperfect recollection”), the comparison in design law is performed with the design to be examined and the other designs side by side. In this respect, the informed user is “particularly observant and has some awareness of the state of the prior art, that is to say the previous designs relating to the product in question”.
2. Overlap of design law and other IP rights
A product design or an element of a product design may, at the same time, amount to both a design right and qualify for protection under other IP rights, particularly under copyright and trademark law. For example, a device mark may also be registered as a design (if new and individual), and the three-dimensional appearance of a product, which can be protected as a design, may also be registered as a trademark (provided it is distinctive). Likewise, logos, in principle, can be protected as designs and trademarks.
Designs may also be protected under copyright law. Whether they qualify depends on whether they are to be regarded as works protected by copyright law. Contrary to the situation in the past, this has to be considered on the basis of the uniform definition of a work harmonized under EU law, which must be applied within the European Union. As a rule, for a design to constitute a “work” protected under copyright law, two cumulative conditions must be met. First, it entails an original subject matter which is the author’s own intellectual creation and, second, it requires the expression of that creation. The distinction between design and copyright is seldom easy to make and is often the subject of litigation in German courts and courts of the European Union.
Furthermore, when seeking patent protection for a specific product, it should always be considered whether this product shows features protectable under design law. This will regularly be the case (unless, from an objective point of view, the features have been chosen solely on the basis of considerations of functionality, which will rarely be the case).
