Key takeaways 

• The starting point — Protecting designs across the globe
  • ​What type of designs can be protected varies by jurisdiction, but generally this refers to a sufficiently unique ornamental depiction of, or on, an article of manufacture. In most jurisdictions, designs can be protected via registration.  Some jurisdictions also have unregistered designs.
  • Unlike trademarks, registering a design provides protection for a fixed period, which varies by jurisdiction. 
  • An ornamental design can be depicted through the shapes and proportion of the item itself, surface ornamentation on the object, or some combination of the two. For example, the design to be protected may be the style of a handbag, the pattern depicted on the bag, or a combination of both.
  • Issues to be aware of when registering a design for protection include selecting the right visual representation of the design, establishing novelty, understanding rules around disclosure of the design prior to registration and defining the design itself. The test for novelty varies across jurisdictions, so companies should be aware of local criteria when filing.
  • Analysis of prior art is key when examining a design application for eligibility. Confirming a design does not already exist will offer a high probability of success in seeking a design registration and maintaining its validity. 
• Monitoring design coverage of competitors
  • When protecting designs, it is essential to maintain visibility on the design coverage of competitors or other relevant partners or vendors to allow for swift action upon identifying infringement and an efficient design enforcement program.
  • Monitoring can be conducted by internal searches or with the assistance of service providers, such as monitoring services.
  • Identifying the source of inspiration of your own products and implementing a clearance process is also a wise practice to counter infringement claims before they arise.  
• Taking precautionary measures to avoid infringement
  • Companies doing business in the EU, and some other jurisdictions, can request a declaration for non-infringement (DNI) from a court that products do not infringe another's design. This is a proactive step that allows companies to anticipate potential infringement claims and provides certainty for businesses who wish to launch in those jurisdictions safely.
  • Invalidity action is the most common means of defence. In the EU, and some other jurisdictions, the vast majority of the actions are grounded on the lack of novelty or individual character (or similar concepts).
  • Technical restrictions for design registrations vary significantly across jurisdictions. However, generally speaking, features of a product which are solely dictated by its technical function cannot be protected using design rights, nor can those which are considered to be contrary to public order or morality. 
• The role of market surveys and expert reports in design litigation
  • As a large number of design actions come down to defending the novelty of a contested design, expert reports can be key in identifying the objective criteria for comparison of the designs.
  • As the test often involves the effect on a hypothetical person such as an informed user, familiar person or ordinary observer, market surveys can be useful tools in presenting this information to the Court.  This research should be conducted by an independent and recognized research institute or company, and how the results are documented should be defined in advance.
  • ​In addition to the expert reports and market surveys, additional evidence which can support design litigation includes creative idea records, sales records for damages, documentation and access to the registered design, and the physical product or photographs of the product. 

For more information, please contact our speakers listed below.     Speakers Asia Pacific Watch the recorded session here. Victoria Bell Special Counsel, Sydney Helen MacPherson Partner, Sydney Binxin Li Partner, China Joanna Ouyang Partner, Taipei Abe Sun Local Principal, Singapore   Europe, Middle East and Africa Watch the recorded session here.  Cristina Duch Partner, Barcelona Michael De Vroey Of Counsel, Antwerp Eva Maria Strobel Partner, Zurich Nathalie Marchand Partner, Paris   Latin America Watch the recorded session here. Juan Pablo Concha Delgado Partner, Bogota Marcela Trigo* Partner, Trench Rossi Watanabe* Rio de Janeiro Valentina Venturelli Partner, Santiago Marina Hurtado Partner, Mexico   North America Watch the recorded session here.   Jim Holloway Partner, Toronto Mackenzie Martin Partner, Dallas Vas Vedentam Partner, Dallas       Trench Rossi Watanabe and Baker McKenzie have executed a strategic cooperation agreement for consulting on foreign law.