As we have seen in previous paragraphs, design law is at the crossroads of several other intellectual property rights: copyright law, patent law and even trademark law.
- Copyright law:
Copyright law protects creations as soon as they are materialised, provided that they are original. There is no need for registration.
A large proportion of products eligible for design rights are often covered by copyright. Indeed, the protection of the appearance, the creative effort on the aesthetics or the decoration of the product can lead to an acknowledgement of originality in the sense of copyright.
This is referred to as the theory of the unity of art: an industrial object with a particular aestheticism, regardless of its use, benefits from copyright provided that it is original.
As copyright is automatic, without the need for registration, the design owner only needs to prove that he/she is the author and, if necessary, that the creation is original.
The advantages of this double protection are numerous:
- It strengthens the dissuasion and the means of action;
- Since design rights are only valid in the jurisdiction in which the registration is made (principle of territoriality), copyright allows protection to be extended to the signatories of the Bern Convention of 1886 (more than 175 countries);
- Copyright offers a longer term of protection: 70 years after the death of the author, as opposed to 25 years after filing for design rights.
- The certificate of publication of the design can constitute proof of copyright ownership.
- Patent law:
A patent is a title issued by a national institution that protects creations related to technical and industrial innovation. It provides a 20-year monopoly on the patented innovation.
While design rights only concern appearance, a patent focuses on inventions that provide a new technical solution to a given problem. Designs cannot protect the technical or functional characteristics of a product, whereas a patent may if the conditions for validity are met (novelty, industrial application, inventive step).
It is advantageous to supplement patent protection with design protection, as it strengthens deterrence and enforcement. Above all, the monopoly of exploitation will be on both the visual and technical aspects of the product. This constitutes a powerful competitive advantage, in addition to multiplying the company’s valuable assets.
- Trademark law:
Trademark law deals with signs that distinguish a company’s products or services from those of competitors. The greatest interest is that it grants a monopoly of use on the trademark for the products and services designated by the applicant.
Graphic elements of a product, such as logos, patterns, or the particular shape of a product, can be registered as a trademark. More specifically, the filing of trademarks for a product shape is possible through the notion of a three-dimensional trademark which protects the appearance of a product when it is distinctive.
For example, the appearance of a bottle such as the famous Perrier® bottle, the shape of biscuits such as Mikado®, or a toy such as Lego®, could be registered as a trademark.
The advantages of dual protection are that:
- The protection of a product’s appearance through trademark law practically grants perpetual security on the figurative sign since the trademark is valid for 10 years, and can be renewed indefinitely;
- Although the requirements for filing a trademark do not include the condition of non-disclosure, they are not necessarily easier to satisfy (especially the requirements of availability and distinctiveness);
- Design law does not have a principle of speciality: protection is valid in all fields, unlike trademark law which limits protection to the goods and services designated in the trademark application;
- The examination of the design application is more lenient;
- Design law does not impose an obligation of use. The right cannot, therefore, be cancelled if the owner is not using its design.
Filing a design application in parallel with a trademark application is, therefore, a sensible way of increasing the scope of protection of a product.
However, few three-dimensional trademarks are registered since the INPI examines more strictly the conditions of distinctiveness, as a visual or feature must be able to fulfil the function of indicating the origin of the product. This is often quite difficult to fulfill when the trademark consists of the shape of a product.
Moreover, trademark law has a similar exception to design law: “a sign consisting exclusively of the shape or other characteristic of a product imposed by the very nature of the product, necessary to obtain a technical result or which confers on the product a substantial value” (Article L711-2 of the IPC) cannot be protected. The shape of a product must therefore not be dictated by the technique or must diverge from the industry standard/habits.
In conclusion, design law provides an interesting monopoly for industrial and craft creations on their aesthetic and decorative aspect. In France, it is important to prepare the application well in advance to ensure a solid right. In the absence of a registration, the designer may still avail him/herself of an unregistered Community design right, which is nevertheless limited. Design law is a good complement to patent, trademark or copyright protection provided that each of the respective validity criteria is fulfilled. It is then possible for the creator to establish a complete right.
