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How to Add Value to a Design

Although a product’s design is not the only criteria for selecting a product, it attracts customers and certainly makes a large contribution towards the ultimate decision on whether to purchase it. Design, as the result of unique creative work, can represent a great financial value because it has the power to sell the product.

Silvia Vašková(Source: Courtesy of Senior Associate B & S Legal s.r.o.)

Although a product’s design is not the only criteria for selecting a product, it attracts customers and certainly makes a large contribution towards the ultimate decision on whether to purchase it. Design, as the result of unique creative work, can represent a great financial value because it has the power to sell the product.

A design is legally defined as the appearance and the look of the product or of its part. It is the product’s aesthetic appearance, such as the lines, the contours, colours, shape, texture and material of the product itself, or its ornamentation.

Considering the potential financial benefit the appropriate design may bring to producers, legal systems around the world have created ways to protect particular designs of novel and individual character, mainly against illegal copying. Such copying of designs can be considered abuse of the designer’s creative work. There is no reason why a plagiarist should profit from the authenticity of the created design.

In order to ensure the exclusive right of the look and appearance of a product, each designer has the option of protecting the value of a design by registering it.

This article will examine the possible methods of design registration and protection of designs on the Slovak, European and international level.

When does a design enjoy legal protection?

Naturally, there are many products, the design of which is so common that it does not enjoy legal protection. According to Slovak legislation, and similarly according to international rules, design is eligible for legal protection if it is new and has an individual character.

A design is considered new if it (or an identical design) was not disclosed to the public by a third party before the date of filing a registration application. Disclosure by the designer is allowed if filing of the registration application follows within 12 months.

A design is considered to have an individual character if the total impression it makes is different from that caused by other design previously disclosed to public.

National Level of Protection

A person who wishes to protect a design just in the Slovak Republic can file a registration application with the Industrial Property Office of the Slovak Republic (Industrial Property Office).

A registration application can be submitted by the design’s creator. When a design is created in the course of employment on the basis of an employer’s instructions, the right to the design, as well as the right to register it, is transferred to the employer. The employee who created the design is entitled to receive appropriate remuneration. The employees are obliged to inform their employer about the design’s creation. Following such notification, the employer has the option of applying for this right in writing within three months. If the employer does not use the above-mentioned right within the prescribed period, the right is transferred back to the employee who created the design.

The Industrial Property Office will register a design into the national registry provided the presented design is new and has individual character (feature of authenticity and originality). Moreover, it may not be contrary to public policy and to decency. Also, the design cannot be identical to another design that already forms the object of an application (i.e. has the right of priority), or which is already registered with the right of priority.

Following registration into the registry, the owner has the right to prevent others from using the design without its consent, the right to grant a license for use of the registered design, the right to transfer the registered design or even establish a pledge on the design. As of the day of registration, competitors are prohibited from producing, offering, launching onto the market, importing or using a product in which the design is incorporated without the owner’s consent.

The validity of a design’s registration lasts five years from the day the registration application was filed. However, it can be prolonged four times for another five years, totalling 25 years from the day of filing the application.

European Level of Protection

Until the adoption of the Regulation of the Council (EC) 6/2002 dated December 12, 2001 on Community designs (Regulation), the protection of designs was dealt with by the national law of the member states of the European Union (Member States), with the exception of the Benelux countries, which have adopted the act on the unified protection of designs. The problems with the differences in national legislations and non-uniformity of this important part of the common market led to the adoption of the Regulation, which unifies the protection of designs and provides for the protection of a design in all Member States on the basis of one registration application.

The Regulation allows the registration of a community design, which will be automatically protected in all Member States. If a designer registers a community design, there is no need for registration in the national registry of designs.

The application for registration of a community design can be filed at the Office for Harmonization of the Internal Market (OHIM), which administers the registry of community designs, or at the national intellectual property office (in the Slovak Republic it is the Industrial Property Office), or at the Benelux Design Office, if it concerns Benelux countries.

The OHIM will register a community design if it fulfills the definition of a design; if it is new and has individual character; and if it is not contrary to public policy or decency. The registered community design is protected for a period of 5 years from the date of filing of the application. The owner of a design can ask for registration to be extended for several periods of 5 years, totalling 25 years from the filing of the application.

The owner of a registered community design has the same rights as the owner of a design registered under national law. The owner of a community design can grant a license to use a design in the entire European Union or only in part of it.

Contrary to the Slovak Design Act, the Regulation also allows protection of the unregistered community design. The protection of the unregistered community design arises as soon as the unregistered design was made available to the public in the European Union, provided that it complies with the conditions of the protection, such as a novelty, individual character and is not contrary to public policy and decency. The unregistered community design affords only the protection against copying of designs and not against identical designs created independently without copying (contrary to registered designs). The protection of the unregistered community design lasts for three years from the date of disclosure to public.

Although the Regulation allows the protection of unregistered community designs, the enforcement of the rights related to the unregistered community design would be probably more difficult and more expensive. For this reason, it is generally recommended to register a community design.

International Level of Protection

Following accession of the European Community to the Geneva Act adopted in Geneva on July 1999 to Hague Agreement concerning the international registration of the industrial designs (Hague Agreement), a Slovak entity can file an application to have their design registered in the International Registry of Designs administered by the International Bureau (International Bureau) of the World Intellectual Property Organization (WIPO). On the basis of this international registration, a design can be protected in all Member States and also in the countries outside the European Union which are parties to the Hague Agreement.

The international application for international registration of a design has to be filed with the International Bureau of the WIPO in Geneva. When an entity that wishes to protect its design in the European Union and also in countries that are parties to the Hague Agreement files an application for international registration of a design, it is not necessary to file the application at the OHIM or at the national intellectual property office as well. Registering a design in the International Registry has the same effect as registering it in the community registry or in any national registry.

After filing an international application, the International Bureau will examine only the application’s formal requirements. The International Bureau will register each design immediately after obtaining the international application or after obtaining corrections of the application. The date of the filing of the application is considered the day of international registration of the respective design.

After registration of a design, the International Bureau will send a copy of the international registration to the intellectual property office in the country in which the design should be protected. If the requirements for a design’s protection valid in the respective country are not fulfilled, the national intellectual property office can reject the protection of the respective design in its territory. The National Intellectual Property Office will inform the International Bureau of the rejection, which will in turn inform the applicant.

International registration is valid for five years from the day of filing of an application. It can be prolonged for an additional consecutive five years, totalling up to 15 years. If the total validity of the national registration in the country in which the design should be protected, exceeds 15 years, the validity of the international registration will be the same as the validity of the national registration (i.e. 25 years in the territory of the European Union).

Protection of designs vis-à-vis protection of works of art

There is a close relationship between works of art and designs, particularly when works of utility art or architectural works are concerned. Works of art are characterized particularly by
an author’s proper creative intellectual activity. When a design complies with the definition
of a work of art, it can be protected under the Copyright Act.

Conclusion

As a design is one of a product’s most important characteristic features, on the basis of which the consumer might decide whether to buy the product or choose one from a competitor, each design owner should consider registering the design. In years of dramatic economic changes in Europe and the world, where the world’s manufacturing capacity is moving from the "old" world to developing countries, we consider design registration an important step for ensuring an owner’s competitive advantage and for protecting creators from competitors who would rely on outright copying of successful and known products.

Silvia Vašková is a senior associate with B & S Legal s.r.o.
This article is of an informative nature only. B & S Legal s.r.o. is local law firm that provides assistance to mainly English and French speaking clients. For more information, go to www.bslegal.sk.

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