Industrial Design Law
by Annette Kur
1. Subject matter, objective, terminology and relationship to other areas of law
Industrial design law serves to protect the appearance of products, ie the elements that constitute a product’s discernible outward form. The subject matter of industrial design law would be colloquially referred to as a ‘design’.
Industrial designs must be demarcated from utility models. Both forms of protection were introduced towards the end of the 19th century in a number of European countries, in order to close gaps in the relationship between copyright law on the one hand and patent law on the other. Whereas industrial designs were intended to protect purely decorative or ornamental elements of industrial products, which often lack the level of creativity that is necessary for copyright protection, utility models were meant to protect functional aspects which improve the ‘usefulness’ of products without necessarily satisfying the requirements for patent protection.
Against this historical background a remarkable shift has taken place in current law. It is no longer disputed that even functional forms of products—up to the point where the form is exclusively determined by its intended use—are eligible for industrial design protection; industrial design law thereby now assumes tasks that were originally allocated to utility model (or patent) protection.
Some peculiarities must be noted regarding the relationship between industrial design law and copyright protection of works of applied art. On the one hand, the similarity of the protected subject matter is unmistakeable: just like copyright law protection, protection of a design is fundamentally a matter of protection of the creative achievement of the author or designer against appropriation and exploitation by third parties. On the other hand, the inclusion of protection of product shapes in the field of copyright law can lead to undesirable effects on the freedom of competition and thus on the conditions for production of utility articles; furthermore, if there is a broad or complete overlap between copyright and industrial design law, the raison d’être of the latter is cast in doubt.
The question of demarcation from copyright and industrial design law that arises from these considerations is a classic issue in intellectual property law. Different solutions, both in the international and historical perspective, may be observed in this respect. German law follows the ‘tier’ (Stufen) theory, established by Eugen Ulmer, according to which the threshold for copyright protection must be higher for works of applied art than for other categories of works in order to leave a certain sphere of application for industrial design law. Conversely, under French law as well as the laws of the Benelux countries, the principle of unité de l’art applies, meaning that there are no differences between the individual categories of works protected under copyright law. In the case of France, this results in the near-complete overlapping (cumul total) of copyright and industrial design law. To overcome these and other differences between the law and practice of EU Member States, the concept of a ‘work’ under copyright law would need to be harmonized. This has not yet happened. Article 17 of the European Design Directive (Dir 98/71) merely stipulates that protection under industrial design law should not preclude protection under copyright law, at any event not in principle. It is up to the national legislature to ultimately determine the requirements and thus the level of the threshold for copyright protection.
2. Trends in legal development
The role of design has changed considerably since the beginnings of intellectual property protection. Initially the principal concern was with ornamentation conferred upon industrial utility objects (machines, etc) in order to mask their function-related sobriety, additions that were regarded as pure ornamentation and hence of low-value. Today however, design in the context of industrial objects is omnipresent and has found general recognition as an important expression of creative achievement. It is also fundamentally undisputed that functional designs, that is, forms that accomplish an optimum harmony of aesthetics and utility, are of high quality. Moreover, it is accepted not only for ‘quality’ design but also for design in practically all other varieties of product that the outward appearance of goods is a not-insignificant factor influencing the consumer’s decision to purchase. The commercial impact of design is therefore significant, leading to an increased need for protection. This results, first, in the reassessment of special legislation to protect industrial designs, as can be observed in European law (see below). Secondly, however, other legal bases are also increasingly being adopted for the protection of designs and textures. This trend is particularly marked in the case of copyright law (see above) on the one hand and in trade mark law on the other. Since, as a result of the harmonization of trade mark law, three-dimensional forms may no longer be excluded from protection, manufacturers are increasing efforts to obtain trade mark registration for the design of packaging and products. Compared with industrial design law, this has the advantage that protection is granted without temporal limits: in contrast to all other intellectual property rights, trade mark rights can be extended at will. Not least because of the long-term consequences for competition, legal practice within Europe tends to treat trade mark applications for product designs with reserve at both the national and the Union level. As a matter of principle, trade mark registration of a shape will only proceed on the basis of evidence that it has acquired distinctiveness (‘secondary meaning’) through use in the market.
Special legislation on industrial design law itself tends towards facilitating the acquisition of protection. It thereby takes into account, on the one hand, the growing commercial significance of this field of law and, on the other, the fact that, at least for fashion-dependent and correspondingly short-lived design articles, a complicated examination and registration procedure does not make much sense. The great majority of European countries’ patent offices therefore do not have a substantive preliminary examination process; the same applies to Community designs. Furthermore, registration procedures regularly provide for further means by which applicants can save costs and effort, such as bundling several designs into one application. Finally, new legal instruments for the protection of designs are being created which completely or extensively dispense with formalities. The most important example of this is the Unregistered Community Design, which was introduced by the Community Design Regulation in 2002.
In light of efforts to facilitate industrial design protection in connection with the opening of trade mark protection to three-dimensional objects, as well as an increasing tendency to lower the threshold for copyright protection, the protection of designs can no longer be described as the ‘step-child’ of intellectual property law. Rather, there are now an abundance of possibilities for protection of designs. However, the problems created by the overlapping of several proprietary rights and systematic discrepancies are no less serious than those that arose in the past from the lack of adequate possibilities for protection. It still remains to be seen as to whether and in what way this could lead to a long-term change in the law and practice of industrial design law.
3. Design protection in European law
On the basis of Dir 98/71 (Design Directive), the design laws of the EU Member States correspond to each other in their essential substantive provisions: subject matter of protection, requirements for protection, scope of protection and limitations to protection. The same applies to the laws of Norway, Iceland and Liechtenstein, which are bound by the acquis communautaire by virtue of the European Economic Area Agreement. In addition, European law has also noticeably influenced the Swiss Design Act of 2002.
The Design Directive contains a rather broad definition of designs that are eligible for protection under design law. The appearance of products or parts of products is protected, where ‘product’ means any type of product, including graphic symbols and typographic typefaces (Art 1 Design Directive). Requirements for protection are novelty and individual character, ie an identical design should not already be available and the product should differ from known designs in the overall impression it produces on the ‘informed user’ (Arts 4, 5 Design Directive). As a matter of principle, novelty and individual character are subject to an absolute standard, ie objections can relate to all known designs that had been made available to the public at the relevant time (as a rule, at the filing date of the application). There are two qualifications to this general rule. First, prior publications are not detrimental if they were made by the designer or his successor in title within the 12 months preceding the filing date; the same applies if the design was published by a third party without the designer’s consent. Secondly, publications are not taken into consideration if they could not ‘reasonably have become known in the normal course of business to the circles specialised in the sector concerned’ (Art 6 Design Directive).
Acquisition of a design right confers on its holder protection against commercial exploitation of the same or a similar design by a third party (Art 12 Design Directive). Whether an infringement occurs is fundamentally decided according to the same standards that apply to the assessment of the requirements for protection. The crucial factor in this respect is again the perspective of an informed user of products of the type in question (Art 9 Design Directive). Acts done in private are excluded from protection; furthermore, acts are also permissible if they are done for experimental or teaching purposes, or if parts protected by a design right are necessary to repair ships or aircraft that are only temporarily in the country covered by the protection (Art 12 Design Directive).
Harmonization has not yet occurred in respect of the question of whether parts of a complex product, which enjoy design protection as such, have rights that can be enforced in an unlimited fashion against the production and distribution of the parts for repair purposes. By virtue of such comprehensive protection, the property right holder is granted a de facto monopoly on the secondary market for spare parts, which leads to doubts in relation to legal and competition policy. Advocates of comprehensive protection dismiss such doubts with the argument that this is merely the usual effect of the exclusivity of intellectual property rights. Since it was not possible to reach agreement, the Design Directive in its current version leaves it up to national legislatures to retain the rules on spare parts that were in effect at the time the Design Directive entered into force. Amendments are only permissible to the extent that they lead to a liberalization of the market for spare parts (freeze plus; Art 14 Design Directive). According to a proposal by the European Commission in 2004, the differences that still exist in Member States shall be resolved by introducing a clause that allows the manufacture of protected parts for repair purposes (‘repair clause’). Nevertheless, owing to resistance, particularly by Member States where cars are produced, the success of this proposal is not foreseeable.
Applications for industrial designs are filed at the national offices of the respective protecting countries. Protection lasts for five years after registration, calculated from the filing date. This can be extended for periods of five years up to a total of 25 years (Art 10 Design Directive). The Design Directive does not contain a regulation in respect of registration procedure, and national rules can therefore vary. In the great majority of EU Member States, applications for industrial designs are merely examined for procedural deficiencies. An examination of the substantive requirements for protection does not occur within the registration procedure, but takes place, if necessary, before the courts of law within the framework of infringement proceedings or at the national offices in the case of a cancellation claim. The same rules also apply in Switzerland. Conversely, in Finland, Hungary and Bulgaria, national offices still examine industrial design applications for novelty and individuality. Furthermore there are different rules for special forms of application, such as the type and number of designs that can be bundled in a multiple design application, as well as the possibility of deferring the publication of a design for a specific period.
The enforcement of rights under industrial design law corresponds with enforcement of other intellectual property rights now that horizontal harmonization, which provides for the equal treatment of all property rights, has been achieved by Dir 2004/48 (intellectual property (enforcement)). The exploitation of industrial design rights by means of licensing and assignment is governed by national law alone. It can be assumed, however, that the possibility of such exploitation pursuant to the provisions that generally govern intellectual property rights is recognized in all European countries.
4. Industrial design protection by international Conventions
Minimum international standards of protection of industrial designs—more generally, for the protection of the appearance of products—can be found in the Paris Convention as well as the Berne Convention. In addition, regard must also be had to the provisions of the TRIPS Agreement that apply to this field: Arts 25 and 26 TRIPS.
Pursuant to Art 1(2) of the Paris Convention, the protection of industrial designs and models falls within the ambit of the Convention. In its special rules, however, the Convention pays little regard to industrial design law. In Art 5quinquies the following sentence can be found: ‘Industrial designs shall be protected in all the countries of the Union’. However, it remains for the Member States to determine the manner in which this protection will be realized. In particular, the Paris Convention does not establish any obligation to pass special laws for the protection of industrial designs; obligations under the Convention are complied with if protection for industrial designs is conferred by copyright law (although this protection may not be subject to strict requirements).
In addition, other provisions in the Paris Convention have practical relevance for industrial design protection. In particular, Union priority should be mentioned in this respect: in the case of industrial design applications that are filed within six months of a prior filing in a country of the Union, the applicant can invoke the priority of the first filing; he thus takes precedence over applications that have been filed in the meantime in the country of protection (Art 4(C)(1) Paris Convention).
To the extent they are considered as works of applied art within the meaning of Art 2(1) of the Berne Convention, design creations belong to the category of works that must be granted protection in all member countries. However, no internationally binding threshold of protection is established by the Berne Convention; national legislatures thus remain free to determine the requirements for granting protection autonomously. Furthermore, for works of applied art, the Berne Convention provides for specific exceptions to standard copyright protection. Accordingly, pursuant to Art 7(4) of the Convention, the term of protection for such works can be limited to 25 years from creation (similar to the case of photographs), whereas a minimum term of protection of 50 years after the death of the author applies to other works. In addition, under Art 2(7) of the Convention, an exception to the otherwise applicable law can be made where a work would only be eligible for industrial design protection in its country of origin (ie the country of first publication, Art 5(4) Berne Convention). In such a case, no obligation exists for another country in which protection is sought to grant copyright protection (instead of, or in addition to, industrial design protection), even if copyright protection would generally be available to such works under the law of that country. For example, where a design is created in Japan, and can at best be protected in Japan as an industrial design, the principle of unité de l’art in force in France cannot be invoked there, meaning that, in France copyright protection cannot be claimed.
As far as the situation within the EU is concerned, however, this exceptional rule is not applicable, as it would contravene the prohibition of discrimination under the TFEU (Art 18 TFEU/ 12 EC); see ECJ Case C-28/04 – Tod’s  ECR I-5781.
Whereas the Paris and Berne Conventions are only marginally concerned with industrial design protection, a rather comprehensive regulation at the international level exists in Arts 25 and 26 of the TRIPS Agreement. Pursuant to the first sentence of Art 25(1), ‘independently created’ industrial designs are protected if they are new or original. The two criteria were deliberately set out in the alternative form (‘or’), arguably in order to prevent Member States from accumulating protection requirements and thereby imposing a high threshold for protection. Nevertheless, this has not influenced legislatures; numerous countries—even the EU and its Member States—require novelty and individuality (or originality, non-obviousness, etc). The assumption that TRIPS has set a low internationally binding threshold is further countered by the fact that, under Art 25(1)(2), a significant difference from known designs can be required. Member countries thus remain relatively free to determine the concrete requirements for protection.
An exceptional status is conferred on textile designs by Art 25(2) of TRIPS. Since such designs are often subject to a very short-term turnover cycle and are often produced in a wide range of varieties, the attainment of protection should not be disproportionately impeded by costs, examination, or disclosure. To that extent, the approach that should be taken—multiple applications, deferred publications, informal protection, etc—is ultimately left up to national legislatures.
Rights consequent upon a grant of protection are outlined in Art 26(1) TRIPS. Protection is oriented against the manufacture and distribution of products that are ‘a copy, or substantially a copy’ of the protected design or model. On the one hand, this formulation emphasizes that similarity between the protected object and the infringing form is decisive. On the other hand, it indicates that TRIPS member countries are at liberty to prohibit acts of manufacture and distribution that are undertaken with an awareness of the protected form. According to Art 26(2) TRIPS, limitations can be imposed on industrial property protection to the extent that they correspond to the three-step test: they must be (1) limited exceptions that (2) do not unreasonably conflict with the normal exploitation of the design, and (3) do not unreasonably prejudice the legitimate interests of the owner of the design, taking into account the legitimate interests of third parties.
The minimum term of protection for industrial designs is set at 10 years under Art 26(3) TRIPS. This relates to the total possible duration of protection; it thus does not preclude a shorter term for types of protection granted in addition to generally available registered protection, such as the unregistered Community design.
Audrey Horton, ‘European Design Law and the Spare Parts Dilemma: The Proposed Regulation and Directive’ (1994) 16 EIPR 51, Christian Meineke, Nachahmungsschutz für Industriedesign im deutschen und amerikanischen Recht (1991); Herman MH Speyart, ‘The Grand Design’ (1997) 19(10) EIPR 603; Annette Kur, ‘Die Zukunft des Designschutzes in Europa—Musterrecht, Urheberrecht, Wettbewerbsrecht’  GRUR Int 353; Uma Suthersanen, Design Law in Europe (2000); Chryssoula Pentheroudakis, ‘Die Umsetzung der Richtlinie 71/98 über den rechtlichen Schutz von Mustern und Modellen in den EU-Mitgliedsstaaten’  GRUR Int 668; Ansgar Ohly, ‘Die Europäisierung des Designschutzes’ (2004) 12 ZEuP 296; Josef Drexl, Reto M Hilty and Annette Kur, ‘Design Protection for Spare Parts and the Commission’s Proposal for a Repairs Clause’ (2005) 36 IIC 448; Joseph Straus, ‘Design Protection for Spare Parts Gone in Europe? Proposed Changes to the EC Directive—The Commission’s Mandate and its Doubtful Execution’ (2005) 27(11) EIPR 391.