Column

Shaping designs

Anouk Siegelaar is a lawyer and Deputy Director of the Association of Dutch Designers (BNO)

There's a lot of confusion about the protection of designs and brand imaging. ‘It's something to do with patent law, isn't it?’ or ‘Once you get to seven differences, copyright doesn't apply!’ So how does it really work? At the Association of Dutch Designers, we answer questions on this subject every day.

One case that attracted publicity recently concerned the Lamzac, an inflatable oblong air lounger. Lamzac's designer had registered their product as a Community design, which enabled them to act against imitations throughout the EU. They also relied on copyright and slavish imitation. Copyright, design right and occasionally trademark right are all intellectual property rights which can be used to protect physical objects from imitation or unlawful competition. So what's the difference between all these IP rights? And do you need them all?

Copyright

Put simply, copyright protects any original creation against imitation. In the Netherlands, you don't need to take any formal steps to obtain such protection. In the aforementioned infringement case, for instance, the court didn't express an opinion on whether the Lamzac was subject to copyright protection, but the assumption is that it was. So why apply for a design registration?

Design right

Only a court can decide whether the visual appearance of a product or item is copyright-protected, so a design registration is advisable if a design is used abroad, where the copyright threshold might be higher. If the design has an ‘individual character’ and is ‘new’, a valid design right can be obtained for up to 25 years within 12 months of initial publication. And what about patent right? Patent right protects technical inventions and applications rather than the visual appearance of a product or item.

One advantage of design right over copyright is that you don't need to prove that a design has been deliberately copied: accidental similarities can also be opposed because the register of designs is publicly available for inspection. In addition, a Community design right can be used to apply for a blanket ban on imitation throughout the EU.

For designs with a shorter lifespan, such as fashion designs, there's unregistered Community design right. This protects unregistered designs throughout the EU for up to three years, but only against imitation. Design protection isn't restricted to products; surface patterns, logos and websites can also be registered as designs.

Trademark right

Possibly, the shape of the Lamzac could eventually also be registered as a trademark. This isn't easy, though, since consumers need to perceive it as a distinctive mark (think of the Coca-Cola bottle, which is instantly recognisable even without the overprinted name). However, the advantage is that the right to a trademark can be extended indefinitely.

Myth

So what about those seven differences? That's probably the most persistent misunderstanding relating to copyright. The judgements made by courts are far more complex than simply counting differences; as a result, many more than seven differences can still constitute an infringement. So it's a myth best forgotten!

The only way to establish what type of protection is best for which design, is to seek professional advice. And it's always a good idea to formulate an IP strategy, especially if your design has the potential to become a global success.