When it starts in the design business or launches a product whose market success is hard to predict, a firm may wonder if registering the design is worth the investment. But it may rest assured that introducing a product into the market does not necessarily preclude its later registration.
An industrial design: what is it?
The most popular and adequate solution to protect intellectual products of the design industry is registered industrial design. As defined in Article 102 of the Industrial Property Law Act, “An industrial design is a new outward appearance, having an individual character, of a product or its part, which results in particular from its lines, contours, shape, colours, texture, material or ornamentation.”
So an industrial design must meet the three-prong test: it must be new, it must be original and it must relate to the whole or a part of a product.
Appearance of product or its part
The term ‘product’ should not be restricted to include just a single item, such as a piece of furniture. You can also register a furniture set or a product made up of several parts. Moreover, registration is also available for one component part of a piece of furniture:
A design is considered to have an individual character (be original) when the overall impression it makes on an informed user is different from the overall impression produced by other designs. Accordingly, the new product must be different from products already on the market.
In assessing originality, reference is made not to the knowledge and perception of the final customer of the product (consumer), but to the impression the design makes on an informed user.
According to case law, an informed user is “a person who uses the item and handles it as an expert” (Warsaw Circuit Court, case no. XXII GWwp 9/08, judgment of 31 March 2009). Therefore, an informed user is a person using the product but otherwise knowledgeable in the design market, with keen insight and with better understanding of the sector than an average user.
For example, informer users include cabinet makers in the case of cabinet door handles but in the case of children’s beds they will include toddler carers, future parents and toddler shop operators (see Warsaw Circuit Court, case no. XXII GWwp 11/12, judgment of 27 September 2012, and case no. XXII GWwp 8/13, judgment of 2 July 2014).
A design is new if no identical design was made available to the public before its registration. A design is identical to another not only when it imitates precisely all the other’s features but also when it differs from it only in immaterial detail.
Design may be registered even if it has already been disclosed
Importantly, if a design yet to be registered is made available upon the consent of the designer, it will continue to be considered new for 12 months after it is so made available. As such, a design may be validly filed for registration not only before it is made available to the public, but also within one year thereafter. This seems to be a perfect solution for businesses as they have time to get an idea about how the market responds to their products and, thus, whether it is really worth investing in design registration.
Registration – not everything is protected
The registration of an industrial design prevents copying for a maximum period of 25 years. Importantly, the protection extends solely to those product features which are perceptible by sight because design rights involve a product’s outward appearance.
Furthermore, protection does not extend to features that result exclusively from the product’s technical functions. Thus, when you have registered a table consisting of a tabletop and legs, you cannot prohibit competitors from producing other tables which also have tabletops and legs because these parts are strictly related to the functions of the table as such.
Check what we refer to:
- The Industrial Property Law Act of 30 June 2000 (as consolidated in Journal of Laws of 2017, item 776);
- Council Regulation (EC) No. 6/2002 of 12 December 2001 on Community designs (OJ L 2002, no. 3, p. 1);
- Warsaw Circuit Court, case no. XXII GWwp 8/13, judgment of 2 July 2014;
- Warsaw Circuit Court, case no. XXII GWwp 11/12, judgment of 27 September 2012;
- Warsaw Circuit Court, case no. XXII GWwp 9/08, judgment of 31 March 2009.