Property Rights - Registered Designs
Duration of design protection
Rights from the registered design, infringement
International design protection
Design rights are used to protect visible manifestations of a product or a part thereof, that is, the external appearance (design) of a product. The manifestation of a design can be derived in particular from the features of the lines, contours, colours, shape, surface structure and/or the materials of the product or its decoration. However, the features of the product that are determined by its technical function cannot be protected. The relationship “Design – technical function = registered design” can be taken as a simple rule and reference point as to what can be protected by a design.
However, a design can only be protected if it is new and possesses peculiarity. A design is deemed to be new if no identical design (identicalness in the essential features) was made accessible to the public before the application (priority). Peculiarity exists if the overall impression imparted to an informed user differs from that of another design.
Registered designs are registered on application. At least one representation of the design or a copy of the design must be appended to the application, where the representation or the copy can also be submitted in a sealed envelop (secret design). In the case of a secret design, the envelop will be opened at the latest 18 months after the priority date of the design – until then the design will remain secret and not registered. A list of goods and optionally a description of the design should also be appended. Designs belonging to the same class can be combined in a collective design application.
Applicants having registered headquarters or domicile outside the EEA must be represented by am admitted representative.
The design application is examined for legality by the Austrian Patent Office (ÖPA) after receipt or after opening the envelope (secret design). If the Office has any doubts, the applicant will be requested to comment on this. If there are no objections to the registration of the design, it will be registered. The design is published with the registration.
NOTE: with effect for the EC, a non-registered Community Design comes into existence with the publication of a design (if this is new and possesses peculiarity) and this offers a period of protection of three years from publication.
The duration of protection is five years from the date of application. The term of protection can be extended four times by a further five years in each case – the maximum duration of protection thus being 25 years.
An Austrian registered design can be contested by an action for annulment if the design does not fulfil the requirements for protection. If another person has the right to a design, that person can request that the design right be revoked.
The design right comes into existence with the registration of the design or with publication in the case of a non-registered Community Design. The design gives its proprietor the exclusive right to prevent third parties from using it without the agreement of the proprietor (= putting into circulation, importing, exporting, using a product which incorporates the design, possessing the product for these purposes).
The infringed party then has a claim for injunction, removal, publication of judgement, monetary claims (appropriate remuneration or compensation), submission of accounts and information about the origin and marketing route of the infringing objects. An interlocutory injunction can also be taken out against the infringer.
Design protection can in principle be acquired nationally in any country. In addition to national design rights, there is also a Community Design with effect for the entire EC. The Community Design is examined, registered and administered centrally by the Office for Harmonization in the Internal Market in Alicante, Spain.
Many possibilities for acquiring design rights in certain countries therefore exist. We should be pleased to advise you as to which of these possibilities is strategically or financially most favourable for your particular case.