Design law is a brunch of industrial property law, which protects the design as the appearance of a product that is new and has an individual character. The product can be either an industrial or a handicraft item, including, inter alia, parts intended to be assembled into a complex item, packaging, get-up, graphic symbols and typographic typefaces, but excluding computer programmes.
In the field of design law, IPI advises its clients and examines relevant registers of design and registers designs before the Slovenian Intellectual Property Office (SIPO) and the European Union Intellectual Property Office (EUIPO). IPI also offers legal advice and drafts submissions for court in relation to design disputes as well as different documents in the field of design law (such as transfer contracts, license agreements, etc.). For more information, write us on firstname.lastname@example.org.
Design is the appearance of a product, protected by law, which gives its holder the exclusive right to use it and to prevent third parties not having his or her consent from using it in the trade. Design means the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation.
The legal conditions from Article 33 of the Industrial Property Act, that have to be met in order to obtain the exclusive right on a design, are that the appearance of the product is new and has an individual character. A design shall be considered new if no identical design has been made available to the public before the date of filing of the design application. A design shall be considered to have individual character if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been made available to the public before the date of filing of the application.
Similar to trademarks, the registration before a competent intellectual property office is required to obtain design protection. The registration of a design has a territorial effect, which means it is limited to the territory in which it is registered. Designs are also limited in time, they usually last 5 years with the possibility of renewal up to 25 years.
Design registration in Slovenia
In Slovenia designs are registered before the Slovenian Intellectual Property Office (SIPO). The applicant may seek design protection for one or many different appearances of the product. For example, a product in two different colours is the same design that has two different appearances. Registration fees vary according to the number of appearances, for which protection is sought.
However, the same product in different variations (per example, a cup with a handle and the same cup without a handle) is considered as different designs.
When the applicant or the representative in trademarks and designs matters files the application, SIPO first examines whether the application meets all the necessary formal requirements set in the Industrial Property Act and the Rules on the Contents of Industrial Design Applications. SIPO then examines whether the appearance of the product can be registered as design. According to Article 36 of the Industrial Property Act a design shall not be registered if:
– it does not meet certain legal requirements or is in conflict with a design, registered in Slovenia on the basis of an earlier application;
– it includes or imitates badges, emblems or escutcheons, unless the consent of the competent authorities to its registration has been given;
– it is contrary to the public order or morality;
– subsists in features of appearance of a product, which are solely dictated by its technical function;
– subsists in features of appearance of a product which must necessarily be reproduced in their exact form and dimensions in order to permit the product to which the design is applied to be mechanically connected to or placed in, around or against another product so that either product may perform its function.
CAREFUL: SIPO does not examine the novelty and the individual character of the product!
If there are no deficiencies in the application or they are being taken care of timely and if the appearance of the product meets all the legal requirements, SIPO issues a decision regarding the registration of the design, enters it in the register of designs and publishes the design in its official journal. Holders of earlier identical or similar designs cannot object the application, but they can, after the design has been registered, claim its nullity before the court if it is conflict with their previous right.
Design registration abroad
Designs can, similar to trademarks, be registered abroad in 3 different ways:
a. Community design registration at the European Union Intellectual Property Office (EUIPO)
For the applicants, seeking protection of the design on the entire territory of the EU, the best option is to gain protection of the Community design, that can be either registered or unregistered. Protection under the unregistered Community design can be obtained without any registration through commercial use of the design within the EU and lasts 3 years from the date when it first became available to the public. The registered Community design, on the other hand, has to be registered before its commercial use at the European Union Intellectual Property Office (EUIPO) in Alicante, Spain. When registered, it provides protection in all 28 member states of the EU for 5 years and can be renewed for up to 25 years.
The application for the Community design can be filed by a Slovenian citizen (or any other citizen of another member state) or a legal person with the place of business in Slovenia (or any other member state), alone or through a representative in trademarks and designs matters. EUIPO first examines whether the application fulfils the formal prerequisites for registration. After that the substantive conditions are examined, namely, whether the appearance of the product is able to protected and its elements are not in conflict with the public order or morality.
CAREFUL: Similar to SIPO, EUIPO does not examine the novelty and the individual character of the product.
If the design meets all the necessary requirements, it is registered and published in the register of Community designs. Also before EUIPO, holders of earlier rights cannot object the application of a design, however, they can claim the nullity of the design after it has been registered.
b. International design registration at the World Intellectual Property Organization (WIPO)
The second possibility is to apply for an international registration according to the Hague Agreement Concerning the International Deposit of Industrial Designs (the Hague Act from 1960 and the Geneva Act from 1999) at the World Intellectual Property Organization (WIPO) in Geneva, Switzerland.
With a single application, a design can be protected in over 60 signatory countries of the Hague Agreement. The registration in different countries through this system offers the same degree of protection as the registration of the design in each country respectively. After the registration of the design has been published by WIPO, selected national intellectual property offices examine whether the appearance of the product meets the conditions for registration.
c. National design registration at foreign intellectual property offices
The third possibility is to register the design directly before foreign intellectual property offices of countries where protection is sought. For this kind of registration, applicants would usually need the help of national representative, with whom IPI cooperates. In most countries, the registration process is similar to the one before SIPO, with the exception that some offices examine also the novelty and the individual character of the product.
What do you need to submit to register a design:
– name and surname of the applicant (or the company name, if the applicant is a legal person);
– address of the applicant;
– citizenship (in case the applicant is a natural person)
– authorization to represent the applicant before SIPO or EUIPO;
– name, surname and address of the designer of the product (in case it is a different person than the applicant);
– up to 7 photos of the product (taken from different viewing angles in order to display the appearance of the product as clearly as possible; the product must be photographed on a neutral surface (a wall, for example) and other objects must not be around; it is also possible to submit renders or graphic displays of the product);
– in some cases, the applicant must also select subclasses from the Locarno Classification, for which protection is sought.