What is a design right?
If you have created a new design, it’s worthwhile considering registering it to effectively prevent others from copying or exploiting your design. A registered design is an excellent and cost-effective tool to protect your rights against copying and counterfeiting.
A design registration means you can register the look of your product. It gives you an exclusive right to your design for a limited time. Designs can be registered to protect the look of your whole product, a part of your product, or even just a small detail. Your product might be something functional, like a mobile phone, a drill, or a toothbrush, or something more decorative like a vase or a piece of jewellery.
You can also protect graphical symbols, logos, computer icons, user interface graphics, even typefaces with a registered design. In Finland, the EU and Russia, design rights are granted for a maximum of 25 years. You can also license or sell a design right.
The design must be new and have individual character over prior design registrations in order to be registered in Finland and in the EU.
You can apply for a design registration through a national Patent Office. The design right is only valid in the country where you applied for it, except for a Community design which is valid throughout the EU. You can apply for a Community design directly through the European Union Intellectual Property Office (EUIPO) or the World Intellectual Property Organization (WIPO).
The EUIPO will not conduct a substantive examination on your application, which means the turnaround for a Community design registration is usually only a few days. This quick processing time, combined with the vast geographical protection scope, lower fees, and simple registration procedure make it an option worth considering. We recommend you start with your new design by applying for a registered Community design!
Even if you forget to apply for a Community design registration, or your design is no longer new, you are still entitled to an unregistered Community design right within the EU. It only requires that the first disclosure of your product took place in EU territory and that it was new and had distinctive character over prior designs at the time you disclosed it. The unregistered Community design right is valid for 3 years from the date of disclosure.
The scope of protection conferred by an unregistered Community design is narrower than that of a registered Community design, as it only protects the design against direct copying. In the event of a dispute, it is also more difficult to appeal an unregistered Community design than to a registered one. As a general rule, you only need the registered Community design if you no longer have possibilities to apply for a registered one.
If you want to register your design in a specific country, you have to apply for national registration in that country. Your rights will be valid only in the country where your application has been accepted. In Finland, design rights are granted by the Finnish Patent and Registration Office (PRH).
The qualifications for registration and the processes applied vary in different countries.
In the EU, there is a directive harmonizing the registration qualifications, but on a global level no such harmonization has been achieved.
Currently, many countries examine design registration applications only to ensure that they meet formal requirements. Some countries, such as the United States and China, also perform more extensive examination of the registration qualifications. If you’re applying for a design registration in these countries, you can expect longer processing times. In Finland, the PRH will also examine the qualifications for registration, but to a limited degree, only focusing on prior Finnish design registrations and registration applications. Community designs that are valid in Finland will not be included in the examination.
Community design registrations
A Community design will grant you protection in all 28 member states of the European Union indivisibly, and is subject to the Community Design Regulation.
You apply for the registration to the European Union Intellectual Property Office EUIPO headquartered in Alicante, Spain.
The EUIPO will only examine that your application meets the formal requirements. Whether it meets the conditions for registration according to the Community Design Regulation will not be examined. This makes the registration process very quick, and you may even get the registration in a few days.
Due to the quick processing times, reasonable fees and wide geographical scope, the Community design filing rates are on the rise, while interest in national registrations in the European Union member states is steadily declining.
If you want an international design registration, you an apply for it through the World Intellectual Property Organization (WIPO). You can have national design registrations in countries that have joined the Geneva Act of the Hague Agreement just by filing a single application.
You can access for example Norway, Switzerland, Japan, Korea, and the United States by using this system.
Even though the system is run by WIPO, the qualifications for registration depend on the national legislation in each country. This means in order to have effective country registrations, it’s important to know the specifics of their legislation.
Russia, Eurasia, and the CIS countries
If you want to protect your design in Russia, Eurasia or the CIS countries, you have to file a separate national application with each national Office. Usually the design registration is called a design patent in these countries. The Eurasian Patent Organization EAPO does not examine design patent applications.
During the past few years, Russia has made some radical changes to modernize its design patent legislation. For example, the requirement to file written claims was abolished on 1 October 2014, and design protection is now granted based on images and visual presentations.
Many of the other countries in this region, however, still require that applications contain written claims as well as visuals.