International: Litigating designs — all you need to know

In brief

Design rights, whether registered or unregistered, can often be a valuable cause of action when challenging the use of identical or similar features in products by competitors or counterfeiters. As there is little global harmonization of design rights, our Litigating Designs series of webinars explored design right protections focusing on four different regions, addressing local and regional regimes and nuances. Topics discussed include precautionary measures and means of defense as well as the evidence needed when litigating designs and the impact of market surveys and expert reports. 


Contents

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.

Contact Information
Daphne Loke
Senior Business Development Manager, Global BD
Singapore
daphne.loke@bakermckenzie.com
Karen Roberts
Senior Knowledge Lawyer, Global Services
Singapore
karen.roberts@bakermckenzie.com
Kay Gemzon
Assistant Business Development Manager, BD, Marketing & Communications
Manila
kay.gemzon@bakermckenzie.com

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