Design law change cuts costs for exporters with designs on Europe

Posted on 26/03/2003

Jim Ribeiro and Oliver Dickie

Important changes to design law in Europe means exporters of innovative products have greater access to a powerful weapon in the intellectual property arsenal.

Exporters must often deal with the problem of cheap copycat products. One option for preventing rip-offs is to register a design for products where visual appearance is an important factor. Until now, the cost of covering the whole European Union (EU) has been extremely high. Recent changes to the design registration system in Europe have dramatically slashed costs to potentially 10% of previous costs to make design registration a more viable option.

From April 2003, it will be possible to file a single “Community Design” application covering the entire 15 nations of the EU. This will bring major cost advantages during both application and any later enforcement action.

What qualifies for design protection?

Design registration should be considered for any product in which visual appearance is an important factor. For example in New Zealand most readers will be familiar with Bodum® coffee plungers and Sony PlayStation® consoles, the Cadbury “glass and a half” ® logo and the Harley-Davidson ® logo.

What are the benefits?

In New Zealand and some other countries, registrable designs may also qualify for protection under copyright or trade mark legislation. So why bother to register your design?

  • Copyright protection is not available for industrial designs in some countries, or may be significantly limited.
  • It may be difficult to prove infringement under copyright as it must be shown that copying has taken place. If a similar design is created entirely independently of your design, you cannot claim protection under copyright. To prove infringement of a registered design, you only have to show that your design and the infringing product are substantially the same.
  • The existence of a registration number (which can be marked on the article) is likely to have a significant deterrent effect on potential infringers.
  • The registered design can be easier to obtain and enforce than a registered trade mark. For instance, the trade mark registration will be limited to a specific range of goods or services. A Community Design registration is not limited in this way. Trade mark protection and design protection are not mutually exclusive: it is possible to have trade mark and design protectionfor the same product.

What are the time limits?

Under the new Community Designs system, you can still apply for a design registration one year after the first public disclosure. This means that you can still apply even if the product is on the market, provided you do so within the first year of public release.

Costs slashed

Under the present national design systems, registration for a single design in a single European country typically costs around $2,000, or around $30,000 for the entire EU. Under the new system, the cost of registration for the entire EU will typically be in the range of $3,000 to $4,000 - approximately 10 % of the current cost.

The cost reduction is even more significant if you need protection for a range of designs. At present, you need a separate registration for each design, making the cost to register ten designs across the entire EU about $300,000. Under the community designs system, you will be able to register multiple designs in a single application. This brings the cost for 10 designs closer to $6,000 to $8,000 -- about 2%-3% percent of the present cost.

The cost of litigation will also be significantly reduced since it will no longer be necessary to sue an infringer separately in each country. A single court decision will apply to the entire EU.

With all these advantages and a potential market of 370 million people, taking out an EU design registration is worth careful consideration.

This article was also published in The Independent, 26 March 2003