The launch of a new product is usually preceded by many months of development work and significant investments. As such, it is no surprise at all that there is a great need to protect this investment!
In general, there are two important ways to protect a new product, namely a design application and a patent application. Both may overlap each other and both applications must be started before you disclose the product. For the Benelux, a grace period of 12 months is now in place, during which period novelty is not damaged. We are able to provide you with further information about this, if you would like us to do so. As such, it is important to consider the following possibilities in advance, make a decision on the steps that you do and do not want to take and also actually complete these steps before you launch your product (even in an exploratory manner).
Design filing: what is a design?
The Benelux Convention on Intellectual Property (Trademarks and Designs) (Beneluxverdrag inzake de Intellectuele Eigendom (merken en tekeningen of modellen) protects designs and drawings. As a design, the new three-dimensional design for an implement can be protected under this Act. Examples are the new appearance of vacuum cleaners, cars or furniture. Drawings will be two-dimensional decorations, designs, motifs or patterns that are applied to products like wallpaper or textiles. In practice, the term ‘design’ is used to refer to designs and drawings collectively.
Why design protection
The development of a new product is often accompanied by significant costs. To avoid a situation in which another party freely takes advantage of your efforts at no expense to itself, it will be important for you to protect the appearance of your new product as a design. A design registration will give you the possibility to prohibit third parties from any commercial act involving the product registered, such as the production, sale or importing of the said product. A design registration only protects the appearance of the product and, as such, not its technical operation.
How a design right arises
Design protection is obtained firstly by registering the design with the Benelux Office for Intellectual Property. A design that is registered must fulfil the requirements relating to novelty and the individual character of the design. On the one hand, ‘novelty’ means that the design may not have been used yet, not even by you. On the other hand, this means that if someone is able to demonstrate that an object that is identical or virtually identical in appearance was already available in the market at the time at which the design was registered, the novelty can be disputed. If this is successful, the design registration will be invalidated. Because of this, novelty is a very important requirement.
The Benelux Convention on Intellectual Property (Trademarks and Designs) now offers the possibility to achieve a valid design registration up to one year after the design in question has been disclosed. However, no case law is available yet about this new concept of ‘novelty’, as a result of which some caution is still called for. The concept of ‘absolute novelty’ is recognised in many countries outside the Benelux, which means that the design must be new throughout the world. Therefore, if you would also like to protect your design outside the Benelux, you will need to take this into consideration and, preferably, apply for protection for the design immediately in each country in which you want to sell your product.