Intellectual Property Law in a

digital world
Session 3 – Design Law
Pr. Alexandra GATTINO-POLLICOTT- Ph.D

Professor of Management Practice – Law Department ESSEC

Business School
Director of the Advanced Masters in International Business Law &
Management (MS DAIM)
Former attorney at the Paris bar
Expert - Centre Européen de Droit et d’Economie (CEDE)
Email: alexandra.gattinopollicott@essec.edu
Session 3

INDUSTRIAL DESIGN & MODELS

LAW
 WHAT ARE DESIGNS &
MODELS?
 From a legal perspective, the protection of a product concerns
the look (design) of a creation or a part thereof. This can
include many characteristics, such as its color, lines contours,
the shape, the texture or the material.

 Design plays a leading role in a product’s recognizability and,

therefore, success. It is a key characteristic of a product that can
help you to distinguish yourself in the market.

 In most jurisdictions, two types of design can be protected under

designs and models law: drawings and models.

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 DIFFERENCES BETWEEN
DESIGNS & MODELS?
 The central element of a drawing is a two-dimensional (2D) design.
Examples can include the design of a fabric, graphic symbols, logos and
typographic fonts. In the case of a model, the central element is the three-
dimensional (3D) design, such as the shape of furniture, household
appliances, tools or clothing. Computer programs and software are not
eligible for protection under designs and models law.
 The combination of a drawing and a design can also be protected where
a drawing is made into a three-dimensional object, such as the pattern
of the fabric on a chair. In that case there is a two-dimensional drawing
and three-dimensional shape. The appearance of the model is then
determined by both the product and by the pattern.
 Finally, designs and models represent industrial property titles for the
protection of the two- dimensional (design) or three-dimensional
(model) appearance of a given object.

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 Artistic vs. Industrial
Designs
 Artistic designs are those which only have a
decorative purpose, without any industrial aim. These
designs have no end other than to be admired
(paintings, sculptures, etc.)
 Industrial designs are those which are intended to be
used for practical purposes (furniture, household
implements, etc.). This type of creation brings together
the useful (the industrial aspect) and the pleasing (the
aesthetic aspect)
 Application and registration for a registered design:
https://www.youtube.com/watch?v=9KByz03PDrI
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INDUSTRIAL DESIGNS
Almost any industrial or handicraft item can be eligible for
design protection (except for computer programs)

Ex: set of products, part of products,

6
shape of computer, computer icons, chair,
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flexible ice bucket etc.

REGISTERED DESIGNS

Ex: design of 3-D chairs/table, graphic

design, ornamentation, website design,
7 logos etc., packaging, maps… (c) A. Gattino Pollicott
Furnishing, packages and containers, measuring
instruments, household goods, means of
transport, electronic goods, decorative items and
textile etc.

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 DESIGN IS EVERYWHERE
 Design protection is part of INDUSTRIAL PROPERTY
 The design …
• usually has to satisfy certain goals and constraints,
• may take into account aesthetic, functional, economic,
or socio-political considerations, and
• is expected to interact with a certain environment.
(source: Wikipedia)

 Design aims to make a product more attractive, more

comfortable or to improve other of its characteristics.
 Design can also be ‘beautiful’ and the boundaries between art
and design are blurred.
 See Designs Europa Awards 2024 :
https://www.euipo.europa.eu/en/designs/designeuropa-awards
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 DESIGNS & MODELS
PROTECTION
 Design rights prevent others from using identical or similar designs
 They add value to the product by making it more appealing to
consumers.
 Some products (e.g. furniture) are primarily sold based on their
appearance
 They enables customization of products to specific markets
 To be successful, it is important that the design of a product is optimally
protected. Designs and models law can offer a solution.
 See: How to Protect Industrial Designs with WIPO’s Hague
System :https://www.youtube.com/watch?v=TxKL8pS-omg

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 The economical
Importance of Designs
When buying a product, consumers decisions
are mainly influenced by:
 price
 technical qualities (patents)
 name or reputation (trademark)
 external appearance (designs)
 Designs: tend nowadays to become the most decisive factor

 See iconic industrial designs with balanced looks (simplicity, proportion

management..) : https://www.youtube.com/watch?v=X7Y1VvwWiaI

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 The economical
importance of Designs
 The interest in registered designs lies at the intersection of innovation management,
industrial design and engineering.

 At a theoretical level, the economic rationale for registered designs rests on the
promotion of creativity.

 On average, firms rely on varied protection mechanisms, adopting informal rather

than formal (i.e. registered TM, Patents and Designs) protection mechanisms more
frequently.

 Registered designs generate value as other more frequently used IP rights.

 No longer do IPRs play the simple role of legal instruments; instead, they have
become business tools, exploited by a wide variety of organizations, to attain
innovation and value creation.

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 Functions of Designs
The most often cited reasons why design is seen as an important part of
business strategy are that :
 It improves the image of the company
 It increases sales, turnover, profits, business productivity
 It increases employee motivation,
 it improves customers satisfaction, communication with customers,
 it can help with the development of new products and services and allows
firms to access new markets.

 The function most likely to depend on design services is:

• marketing,
• product development,
• strategy.

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Economical Importance of
Designs

14 Today: 250 to 350 persons in charge of the industrial design

division
 Why designs matter
“An object must be designed in such a way as to tell a story, using elements of
functionalism or symbolism or aestheticism. It functions within any market-
based environment within different product sectors due to a complex
relationship between : • utility,
• market demands,
• public taste,
• merchandising,
• consumption habits,
• branding,
• visual appeal,
• pricing.
Indeed, business entities, creators and consumers understand that objects can
be essential equipment, throwaways, vital spare parts, lifestyle signifiers, and
even investments”. (2020 Uma Suthersanen)

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 Design sectors
 In this view, the aesthetic appearance of a product is one of many ways it
communicates messages to the users. Therefore, registered designs also
might have some economic underpinnings, similar to trademark
registrations, regarding the protection of the emotional and symbolic
value of a product.
 Design intensive sectors (using Locarno Classification) are for example :
Furniture, Clothing, Lightning apparatus, Packaging and containers,
Sanitary, heating, ventilation, air conditioning, Means of transport,
Games, Household goods, Tools and hardware.
Those sectors amount for 50% of all filing in a Community design for instance.
In 2013, Design-intensive industries contribute 12.2% of employment in the EU
and 12.8% of the GDP.
 A rapidly growing number of empirical contributions examine the
relationship between industrial design and financial performance at the
firm level (Candi and Saemundsson, 2011*; Chiva andAlegre, 2009*;
Gemser and Leenders, 2001*; Hertenstein et al. 2005*).
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 INDUSTRIAL DESIGN
CONDITIONS
 But, to be eligible for protection, a design has to be NEW and
have its own INDIVIDUAL CHARACTER.
 The design must not be dictated by technical function
 The design must not be contrary to public order or
morality
 A design is considered to be novel if its overall
impression differs sufficiently from previous designs
disclosed to the public (“prior art”)
 The assessment of novelty always implies a
comparison between the design for which protection is
sought and the prior art
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 NOVELTY AND
INDIVIDUAL CHARACTER
 A design has to be NEW and have its own INDIVIDUAL
CHARACTER.

’New’ in this case means that no identical drawing or model has

previously been made available to the public.

The “individual unique character” is a slightly more complicated

criterion. An individual character is established by the question
whether a so-called informed user could distinguish between
the new model and a similar model. In other words, would the
so-called informed user confuse the design of the new product
with one that has been previously made available to the public ?

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 ASSESSING INDIVIDUAL
CHARACTER
 A design has to be NEW and have its own INDIVIDUAL
CHARACTER.

 When assessing individual character from a legal perspective, you

must also consider the degree of freedom that the designer
has when developing the drawing or the model. The less
freedom the designer has, the sooner there could be a new model
with an individual character. The functionality of trousers or a
chair, for example, is the same for everyone. The context is the
same for everybody, so the distinguishing character has to lie in
other specific elements.

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 PERFORMING ADVANCED
DESIGN RESEARCH
 It is these two criteria (new and individual character) which
perhaps make the protection of design rather difficult. How do
you know how unique your design is?

 It is important that you look for an answer to that question either

on your own or together with your lawyers.

 Use the WIPO database:

 http://www.wipo.int/reference/en/designdb/

 An internet search does provide important information, but is

certainly not enough. A product search in the relevant design
registers will provide the necessary, additional answers to your
questions.
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Assessment of Novelty: new
design or design lacking
novelty?

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 THE ART OF ENGINEERING
INDUSTRIAL DESIGNS
 Ever wonder who designs everyday objects like your kitchen faucet? We
head to Delta Faucet to meet Jordan, an industrial designer who works
with engineers to take creative sketches from concept to functional art.
Design and function come together in this fascinating episode!
 https://www.youtube.com/watch?v=iVy0qGqmKFU

Examples of sources of inspiration to sketch :

https://blog.printsome.com/creative-design-inspiration/

22 (c) A. Gattino Pollicott

 REGISTRATION PROCESS
 Designs and models law protects the appearance of a product or
a part thereof. Important conditions apply before you can qualify
for protection, including the need for novelty and individual
character.
 If you have registered the specification of your product as a
design, you can prevent others from, for example,
manufacturing, offering or marketing the same or a very
similar design.
 It is also wise to proceed with registration before you begin to
exploit the product or launch it on the market. In many
countries, a design can only be registered if it has never been
made available to the public anywhere in the world. You
should therefore make sure that the release of your design is
properly coordinated with the legal steps required to protect it.
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 UNREGISTERED DESIGN
 The EU’s Industrial Designs and Models Law also includes
protection for unregistered designs. However, this only covers the
right to prevent deliberate imitations;
 In practice, the required intent (derivation) is often difficult to
prove. The protection of an unregistered design is therefore more
difficult to maintain than the protection of a registered design.
Besides the difference in scope, registration is also recommended
due to the duration of protection. A registered EU design is
protected for 25 years compared to three years for an
unregistered design.
 Read this article: “Register or not register a design in the fashion
industry?”:
http://www.wipo.int/wipo_magazine/en/2008/01/article_0006.h
tml
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 DIFFERENCES WITH
OTHER IPR
 Like trademarks, designs are key factors for companies in
securing and retaining clients. They are an integral part of the
characteristics that make it possible to assert the identity and
image of a brand.

 Design rights protect the Aesthetic Feature of a Product,

NOT the Technical aspect (Patents) nor its name
(Trademarks)

 For a design protection, the function shall not dictate the shape.
 See:
https://www.lavoix.eu/en/news/279/shape-and-function-bew
are-the-protection-strategy
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 LEGAL ACTIONS

 Designs and models law enables you to act against

infringement.

 Infringement occurs when the design of a third party

is indistinguishable from your design in the eyes
of the public.

 In many cases, the protection of designs and models

is applied cumulatively with copyright.

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 ICE BAG CASE (1/3)
 Prior art: Transline range

 Original product : Ice bag

 Infringed product: chill bag

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 ICE BAG CASE (2/3)
 The Patents County Court has ruled that a Community registered design called an
"Ice Bag" was valid and infringed by the defendants' product. (Gimex International
Groupe Import Export v The Chill Bag Company Ltd and others [2012] EWPCC 31,
20 July 2012.)
 The Patent County Court called to declare itself upon the registered design ICE BAG in
conflict to CHILL BAG and other ice bucket bags, has examined in the details the
following aspects:
 Identify the product
 Identify the informed user
 Design freedom
 Overall impression of the design
 Validity: a) Function, b) Novelty, c) Individual character
 Infringement: The English Court has pronounced itself in favour of the registered
design ICE BAG, as this is "a product that is being marketed as something specifically
designed to keep bottles on ice".
 On the detailed examination of ICE BAG and CHILL BAG, the English Judge
acknowledges that the difference between the two products are the height and the width
and "the overall impression on an informed user of bottle chillers created by Transline is
different from that produced by the Ice Bag design".
Read more: http://www.eip.com/uk/updates/article/gimex_v_chill_bag_does_the_indication_of_the_pr
oduct_in_a_registered_design_affect_validity_and_infringement
 ICE BAG CASE (3/3)

https://www.icebag.com/shop/3-for-everyonehttps://www.icebag.com/shop/3-for-everyone
https://www.icebag.fr/qui-sommes-nous/contrefacons-dites-non
http://www.eip.com/uk/updates/article/gimex_v_chill_bag_does_the_indication_of_the_product_in_a
_registered_design_affect_validity_and_infringement
 CROCS CASE

 https://info.legal-patent.com/en/design-law/crocs-loses-eu-de
sign-protection/
 Crocs loses EU design protection for colored rubber clogs
 The US manufacturer Crocs loses the ligitation over the design of
their famous plastic shoes. The shoe design had been public for
more than twelve months before the application for protective
rights.
 Because the nautical fair in Fort Lauterdale, on which the shoes
have been presented, was known to international experts and the
website has worldwide access. Finally, Crocs could not prove
that the design of their rubber shoes had not been made
public by at least one of the revelatory acts prior to the
deadline.
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 What role does design play in
Procter and Gamble's business?

 Please read these articles and comment them :

 « Designing for business success » WIPO magazine Nov

2012:
http://www.wipo.int/wipo_magazine/en/2012/06/article_0004.h
tml

 "Wafrica: exploring identity through design” :

https://www.wipo.int/wipo_magazine/en/2018/06/article_0004.
html

31 (c) A. Gattino Pollicott

 To conclude: Importance of design in
the EU marketplace (1/2)

• Design is increasingly recognized as key to bringing ideas to the market and

transforming them into user-friendly and appealing products.

• Design is important for consumers who often choose a product based on how it
looks. Well-designed products create an important competitive advantage for
producers and companies that invest in design tend to be more profitable and
grow faster.

• In order to encourage producers to invest in designs, there needs to be

accessible, modern and effective legal protection for their design rights. Currently,
there is a broad range of legal tools to protect designs at national and EU level.
This gives right holders flexibility and a choice of protection that can be used
according to their needs.

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 To conclude: Importance of design in
the EU marketplace (2/2)

• The cost of registering a DESIGN (350 EUR for a RCD) is minimal

compared to the money it can bring in return.

• Having a Design registration is a good start even if the short term

strategy of the company does not contemplate litigation.

• DESIGN protection combined with TM protection and other IP rights

seems the good strategy to follow.

• Registered DESIGNS provide good value for money and is adapted

to the digital economy: Graphical User Interfaces (GUIs), for example
can be protected by RCDs see http ://idfive .org/study-of-practices-on-
protection-of-new-technological-designs/?red=finished-project
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 New trends in designing: international
studies and recommendations

• ID5 “Study of practices on protection of new technological

designs” ( http://id-five.org/study-of-practices-on-protection-of-
newtechnological-designs/?red=finished-project)
• WIPO SCT/37/2 “Analysis of the Returns to the Questionnaire on
Graphical User Interface (GUI), Icon and Typeface/Type Font
Designs” (https://www.wipo.int/meetings/en/doc_details.jsp?
doc_id=365358 )
• WIPO SCT/42/6 “Proposal by the delegations of Japan and the USA
for a joint recommendation: Industrial design protection for
graphical user interface (GUI) designs”
(https://www.wipo.int/meetings/en/doc_details.jsp?doc_id=454505
• ID5 “Catalogue of Partial Design Protection”
http://id-five.org/comparative-study-of-partial-designs-as-
effectivemeans-of-protection-industrial-design-innovation/
34 (c) A. Gattino Pollicott
 ANY QUESTION?

THANK YOU FOR

YOUR ATTENTION

Contact details :
alexandra,gattinopollicott@essec.edu