IP protection for design businesses in the EU 

This article is part of #DESIGNIPR, an online guide to making your design business more profitable, more competitive and safer on the international markets with the support of IP rights (IPR). Written by legal adviser of Ornamo Jussi Ilvonen, the online guide gives an overview to markets and law in the EU, US, China and Japan. 

Part 2: IP protection for design businesses in the EU

Intellectual property rights (IPR) legislation, protecting creators’ and other right holders’ intellectual property (IP), such as design, works of art and literature, inventions, computer programs, and different types of identification marks for products and services, is relatively widely harmonized within the EU area with numerous directives and regulations. The slowly but surely progressing IP law harmonisation seeks to, among other things, help businesses and creators sustain a creative profession and establish successful businesses within EU area, both in digital and non-digital environment.

However, there still are many small deviations within EU member states concerning IP protection, so the protection is far from being totally harmonized (perhaps it never will be). Many directives only provide a minimum level of harmonization, which is further implemented via national member state laws. This is important to consider especially, if one is thinking about obtaining IPR protection only in certain EU countries, for example for business strategic reasons. For example: all EU states do not offer utility model protection for technical inventions, e.g. Sweden and Luxemburg.

Another example on differences of IP protection: all EU states do not have a uniform ”treshold of originality” for copyright of design/works of applied art. Copyright cannot be registered in most countries of the world, but instead, a sufficient level of originality is the legal requirement for copyright protection to exist in the first place. This level is primarily set up according to a line of national court cases or expert body decisions. For example, in Denmark, the treshold of originality for design is proven much lower than in Finland. Many times, the reason why a particular design has been seen lacking copyright protection has been the dominating effect of function over form; for example, the creator has come up with a certain type of product design mostly due to functional, instead of purely creative reasons.

Thus, although it is true that in many cases copyright does indeed protect design, one should not blindly trust that it always does so. Instead, when protecting design or related IP in the EU (or other areas), one should always aim to:

• analyse the situation preferably with an IP expert, in order to assess the most suitable forms of IPR for one’s needs in the country/countries in question – also taking into account e.g. prior IPR registrations by others
• do this prior to disclosing the design, valuable information or other form of IP to outsiders in order to ensure IPR registrability and/or avoid unauthorized use
• remember to, as an additional precaution, always document one’s creative work and process in order to provide evidence for e.g. third-party IPR claim situations 

Especially design rights (also called industrial design rights and in some parts of the world design patents) are useful for the protection of design. Design rights are available in all EU countries. What’s more, EU legislator has introduced a very useful and cost-effective forms of design protection, registered and unregistered community designs, which provide design protection with one application in all EU countries. It is inexpensive and fast to obtain.

In the following sections we’ll take a closer look on the main forms of IP rights for design / design business protection available in the EU. For more information on IPR and IPR utilization in Europe, see e.g. the EU IP Helpdesk’s IP guidebook. For more information on national IP rights in- and outside Europe, see also the database of World Intellectual Property Organisation (WIPO).

KEY FORMS OF IPR TO PROTECT DESIGN OR DESIGN BUSINESS IN THE EU

Copyright (Finnish: tekijänoikeus) 

• copyright is born automatically to the author of a creative work (never to a company or other non-human entity) for creations that are considered ”original” in the legal sense
• protects all kinds of literal, artistic and scientific works, including design.
• copyright registration is not possible (unlike in the US and China).
• the duration of protection may vary from country to another, generally speaking in force until 50 to 70 years has passed after the author’s death (in Finland: 70 years)

Design right (Finnish: mallioikeus) 

• protects the appearance of a product or a part of a product, consisting of e.g. forms, lines, colors, textures, decorations and/or materials. Design right protection covers all designs, which produce the same ”overall impression” as the protected design.
• Protection can be obtained via three different ways in the EU:
  • a) filing a national application for registration/registrations in one or several EU countries, Finland: PRH
  • b) obtaining EU-wide design protection via either an application to EUIPO (registered community design, RCD) or obtaining 3 years of protection without registration via a wide disclosure of the design (unregistered community design, UCD), more info: EUIPO webpage
  • c) filing an international application via WIPO’s Hague system in the desired countries (also available for countries outside EU)
• Generally, the requirements for obtaining a registered design right are
  • a) novelty. The design must not be disclosed prior to registration. Exception: in many EU-countries there is an exception to the rule, enabling registration for designs that are disclosed less than 12 months prior to filing for registration (so-called ”grace period”)
  • b) individual character. The imaginary ”informed user” would find the design (or a part of design which is to be registered) different from other designs that are available to the public.
  • c) result of creative work (purely technical features of the design cannot be protected with design rights)
• Maximum duration of protection is usually, depending on country, 25 years, usually 5 years at a time. This is the case e.g. in Finland and with EU-wide registered community design.
• Registration cost: RCD’s starting from 350 euros, national registration prices vary (e.g. Finland: starting from 250 euros)
• A pragmatic note for designers: an RCD can be obtained extremely fast, even within days. It’s also relatively a very cheap form of IPR: EU wide protection at similar cost as a single national application. Furthermore, a national application’s registration process may take many months. The low cost and high speed of RCD registration is largely because of lower officials’ input in the registration: unlike e.g. in Finland, the EU official (EUIPO) does not examine prior registrations from its databases. Therefore an applicant of RCD should always remember to pay close attention to examining prior designs from EUIPO databases in order to diminish third party claims. In addition, some right holders and IP attorneys prefer multiple independent applications for tactical reasons: many independent registrations in different countries may be much more difficult to challenge by third parties than just filing one claim to EUIPO concerning a single EU-wide RCD registration. , a national application’s registration process may take many months. The low cost and high speed of RCD registration is largely because of lower officials’ input in the registration: unlike e.g. in Finland, the EU official (EUIPO) does not examine prior registrations from its databases. Therefore an applicant of RCD should always remember to pay close attention to examining prior designs from EUIPO databases in order to diminish third party claims. In addition, some right holders and IP attorneys prefer multiple independent applications for tactical reasons: many independent registrations in different countries may be much more difficult to challenge by third parties than just filing one claim to EUIPO concerning a single EU-wide RCD registration.

Trademark (Finnish: tavaramerkki)

• protects various types of signs included in goods and/or services, e.g. words, logos, numbers, packaging, person names, letters, colors, sounds, even product appearances, like with design rights
• A trademark can be obtained in three ways in the EU:
  • a) national application(s) to national IP office(s), Finland: PRH
  • b) EU-wide regional application (EU trademark, EUTM) to EUIPO
  • c) international application via WIPO’s Madrid system in the desired countries (also available outside EU)

• Generally speaking, trademarks must be registered in order to be in force. Exception: well-known marks may have protection also without a registration. It is always safe to assume, in the absence of solid market data, that your own trademark isn’t protected unless it’s registered.
• Requirements for registration: the registered mark must be
  • distinctive in relation to other traders’ marks
  • non-deceptive (e.g. ”Dairy-free” for a product that contains dairy)  non-descriptive (e.g. milk with a product name ”Milk”)
  • non-customary in the language
  • non-contrary to public order and morality
• Duration of protection: unlike all other forms of IPR, trademark registrations can be renewed unlimited times. The duration of protection in the EU countries is usually in force 10 years at a time.
• Obligation of use: in most countries, unlike e.g. design rights, trademark’s exclusive nature can be lost, if upon a claim from a third party there is no sufficient proof of use during a certain time period (EUTM: five years after registration). That is, the use of such ”unused” marks cannot be denied by others.
• Cost: varies, also depending on the number of goods and service classes, where the mark is desired to be in force. EUTM trademark costs start from 850 euros. .

Patent (Finnish: patentti) 

• protects inventions for products or processes which offer either a new technical solution or new way of doing something. A patent essentially gives the exclusive right to deny others from using the patented invention
• three routes to registration in the EU:
  • a) national level via national IP office(s), Finland: PRH
  • b) regional level, through the European Patent Convention (EPC) via European Patent Office – in practice this results in a bundle of national patents to EPC contract states
  • c) international level, through the Patent Cooperation Treaty (PCT) system

• requirements for registration:
  • a) novelty. The patentable invention must be new, i.e. not disclosed to the public. The novelty will be compared by patent registration officials to the existing knowledge in the relevant technical field, which in part results in a relatively long registration times, even many years.
  • b) inventive step. The invention must not be obvious to a person with average knowledge in the relevant field.
  • c) the invention must be capable of industrial application.
• Duration of protection: in most countries, 20 years from filing the application
• Costs: relatively high, roughly estimation: thousands of euros per patent, depending especially on how many countries are included in the patenting

Utility model (Finnish: hyödyllisyysmalli) 

• very similary to patents, a utility model protects only new inventions, but the requirements for inventive step and non-obviousness are much lower than with a patent. Thus, utility models are often called ”petty patents”. 
• only one way to register a utility model in the EU: national level. Within EU, available in Austria, Bulgaria, Czech Republic, Estonia, Finland, France, Germany, Greece, Ireland, Italy, Polan, Portugal, Slovakia and Spain. 
• Duration: much shorter than patent’s: depending on country, from 7 to 10 years from the filing date of application. 
• Cost, etc.: much cheaper and faster to get than a patent, more information e.g. from Finnish IP office PRH 

Some other forms of IP protection for designers to be aware of 

• Trade secrets (not registrable, but licensable) 
• Company names (not to be confused with e.g. trademarks) 
• Domain names (along with trademarks, potentially a good small addition to a brand protection portfolio with a low cost) 
• IP protection and the role of contracts (EU IP Helpdesk guide) 

Part 3: IP protection for design businesses in the United States to be published soon!

Earlier issues:

• Part 1: Design business outside Finland: the supporting role of IP rights?

#DESIGNIPR is part of Ornamo’s national IPR project supported by the The Ministry of Education and Culture Finland.