Industrial Design Registration. Industrial Designs and Models protect the visual appearance, ornamental or aesthetic aspect of a product, i.e. its shape, contours or colour rather than its functional novelty. A design may consist of three-dimensional features, such as the shape or surface of an article, or of two-dimensional features, such as patterns, lines or a combination of colours. A design must be novel having in mind that no other identical design has been made available to the public beforehand. Two designs are deemed to be identical where they only differ in irrelevant aspects. A design must also have individual character that is when the overall impression produced on the informed user differs from the overall impression produced by any design that has been disclosed to the public beforehand.
We should mention the definitions in article 3 of the Community Design Regulation of:
(a) “design” means the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation;
(b) “product” means any industrial or handicraft item, including inter alia parts intended to be assembled into a complex product, packaging, get-up, graphic symbols and typographic typefaces, but excluding computer programs;
(c) “complex product” means a product which is composed of multiple components which can be replaced permitting disassembly and re-assembly of the product.
Why Protect a Design? An industrial design registration confers a solid exclusive right for the attractive and appealing aspects or shape of successful products in the market; adding commercial value to the protected product.
How Abecsa Can Help You? The value-added services we provide for your design protection strategy can be summarized as follows:
Plan Your IP Strategy. We can help you plan your IP protection strategy in any desired territory, according to your needs and budget, but always with the aim to attain the widest protection as possible by also avoiding common filing mistakes that could suppose a threat to the validity of your IP rights in the future.
Full Assistance. Abecsa can represent and assist you if you in all the process if you want to register a Spanish Industrial Design (OEPM) or a RCD European Registered Community Design (EUIPO) and later, if you would like to designate other countries through the Hague System (WIPO) for International Design Registration or via National Design registration directly in the countries of interest. Our fees for Design registrations and prosecution registration are fixed for each stage in each national or regional Office of our jurisdictions so you can foresee the estimated costs for your Design protection strategies in these territories.
Search Services. We may conduct a free basic search by owner or designer in Spain and in several European Registers (EUIPO, WIPO, OEPM) to help you finding if your product is not registered by a certain owner or cited designer and it is likely available before we apply for a Spanish or Community design. If you wish, we could also carry out an accurate and comprehensive search (currently, no accurate search retrieving designs based on similarity can be done inexpensively) along with our written search report and a risk assessment, by using tools and databases that are not publicly available. This is a highly skilled work that should be conducted by a specialized IP professional.
Design Filing. The initial strategic steps are decisive to achieve success in the future with your design, therefore we take particular care and assist on the following features:
- Where to Register Your Design. Depending on the countries where you will launch the new product or where you would like to expand to in the nearest future, we can plan and give advice on the best routes to take for design registration; National, European, International, which we will electronically file in your name.
- What & How to Protect. We will evaluate the relevant visual elements of a product such as is its appearance or aesthetic aspect and/or may propose to exclude those which could irrelevant for the protection of your design, bearing in mind how will it be graphically represented, the needed number and format of views for each design; images or drawings, according to how your design will be used and to its business sector. We will study and bear in mind the convenience of the possible supplementary patent protection or trademark registration, if applicable.
- When to Apply. Commonly, the industrial design should be filed as soon as possible ensuring you are the first-to-file and to safeguard your rights for that object or product.
- Who. The applicant(s) and hence the ownership of the design should always be held by person or legal entity who will likely use and market the product in invoicing or makes the investment in the advertising and promotion.
Prosecution and Management. We will monitor the whole process of your design registration until it is finally published and duly inform you of every official communication we receive from each Office, along with our preliminary advice on the step to take, if needed, as well as by sending you the publications and informing you of all deadlines to have in mind, including reminders and next renewal due notices, well before the given time limit, in order to avoid extra charges or a resulting loss of rights.
Defense. – Office Actions. If your design application is objected by the Spanish Office (OEPM), the European Design Office (EUIPO) or by the International Bureau (WIPO), based on the formalities check, a design application must go through, or if it is opposed by a third party after grant (post-grant opposition), we can study the cited grounds for refusal or the relevance and differences of the earlier right on which the opposition has been based and file the Office action response in defense of your rights within the given time limit, by designing the adequate strategy so we likely ensure success and obtain the desired registration of your design, and hence a solid enforceable design protection. – Litigation. In enforcement, we can represent and assist either the claimant or the defendant in design rights infringement proceedings both with the Spanish and European Courts.
Please do contact us via our contact form if you need advice on any design issues such as:
- Registering your design in Spain, Europe or in multiple countries.
- Opposing a registered Spanish or European Community design by others.
- Defending your challenged Spanish, Community design or International design designating Spain or the EU, from an appeal, invalidity or cancellation action.
- Taking legal action against another person or company who is infringing your design right in Spain or in Europe.
- Renewing your design for another five-year-period.
- Licensing the use of your design or selling your portfolio ensuring the recordal of assignment of some or all the designs to the buyer.
Confidentiality. If this is the first filing of your design, it is convenient that you do not disclose the aesthetic characteristics until you have applied for design protection, this may mean that, for certain cases, you might not be able to protect it, or your design may be declared invalid by anyone who proves this preceding disclosure (lack of novelty). However, you can safely discuss it with us, because as registered patent attorneys and lawyers, any information you disclose to us is legally privileged and confidential, using it strictly for the purpose or needed service we are instructed to handle in your name.