Industrial Designs: Protect the Appearance of Your Products Before Your Competitors Do

Industrial design protects the external appearance of a product or part thereof — its lines, colours, shapes, textures and materials — and is regulated in Spain by Law 20/2003 on the Legal Protection of Industrial Designs (Ley de Protección Jurídica del Diseño Industrial) and at European level by Council Regulation (EC) No 6/2002 on Community designs. Registration with the Spanish Patent and Trade Mark Office (OEPM — Oficina Española de Patentes y Marcas) provides protection in Spain for renewable five-year periods up to a maximum of 25 years; registration with the European Union Intellectual Property Office (EUIPO) provides the same protection across all 27 Member States with a single application. The unregistered Community design provides automatic protection for three years from its first public disclosure in the EU, though with more limited coverage than the registered design. The registrability requirements are novelty (no identical design having been previously disclosed) and individual character (a differentiated overall impression on the informed user).

Industrial design is one of the intellectual property assets with the highest return on the protection investment: the registration cost is modest and the protection against copying can determine the viability of an entire product line.

Industrial design as a protectable competitive advantage

In markets where differentiation by price is difficult, design is one of the few sustainable competitive advantages that companies can protect legally. A product’s design not only influences the consumer’s purchasing decision: it builds brand identity, justifies premium positioning and creates barriers to entry against competitors that seek to capture market share through imitation.

The paradox is that many companies that invest significant resources in the design of their products do not protect them. This occurs because industrial design is a less well-known intellectual property figure than trade marks or patents, and because many designers and companies incorrectly believe that the copyright that arises automatically over a design provides sufficient protection. It does not: copyright in an industrial design is difficult to prove, uncertain in scope and complex to apply in Spain, where the courts have historically been restrictive in relation to the accumulation of industrial design and copyright protection.

Formal registration with the OEPM or the EUIPO provides a title of ownership with a certain date, a presumption of validity and a full range of enforcement actions against infringers.

Novelty and individual character: the two pillars of design registration

The two registrability requirements for industrial design — novelty and individual character — are assessed in relation to the corpus of pre-existing designs in the sector of the product in question. The reference date for the assessment is the date of the registration application (or the priority date if a priority from an earlier application is invoked).

Novelty is an objective concept: a design is new if no identical design has been publicly disclosed before the application date. Identity is assessed considering only differences that are imperceptible to a non-specialist observer. This is an important distinction from the patent: industrial design has no inventive step requirement, only novelty and aesthetic singularity.

Individual character is a more subjective criterion: the design must produce in the “informed user” an overall impression that differs from that produced by pre-existing designs. The “informed user” — a legal concept coined by the Court of Justice of the EU — is an advanced consumer, more attentive than the average consumer but without the technical knowledge of a professional designer, who is well acquainted with the sector and aware of pre-existing designs.

Design registration strategy: national, Community and international

For most companies with products in the European market, the registered Community design before the EUIPO is the option with the best cost-coverage ratio: a single registration, a single fee, protection in 27 EU countries for up to 25 years. The cost of a single registration is approximately €350 in EUIPO fees plus advisory costs.

To protect the design outside the EU, the WIPO Hague System allows a design to be registered in up to 90 jurisdictions with a single international application. This is the appropriate instrument for companies with a global presence or that export to markets such as the USA, Japan, China or India.

National registration with the OEPM is only appropriate where the company operates exclusively in Spain without international reach, or as a tactical strategy for rapid protection while the Community registration is being processed.

Defending the registered design: from the cease-and-desist letter to the mercantile court

When an infringement of a registered design is detected — a competitor manufacturing or selling a product with the same appearance — the typical enforcement process has several stages.

The first line is always the extrajudicial cease-and-desist notice: a letter sent to the infringer notifying the ownership of the registration, identifying the infringing products and demanding the immediate cessation of manufacture and sale. Many infringements are resolved at this stage, particularly where the infringer is a distributor or intermediary unaware of the product’s origin.

If the notice is not heeded or the response is unsatisfactory, the next stage is a civil claim before the competent Mercantile Court (Juzgado de lo Mercantil — which has exclusive jurisdiction over industrial property matters in Spain). The proceedings can include urgent precautionary measures ordering the attachment of infringing products and cessation of the activity, which can be sought before filing the main claim in urgent cases.

Protection of a company’s industrial design portfolio integrates naturally with broader intellectual property strategy — trade marks, copyrights, geographical indications — and with domain name strategy for comprehensive coverage of intangible assets. Where the copying of a design is accompanied by acts of unfair competition — such as confusion as to origin or misleading comparative advertising — the design infringement action is complemented by unfair competition actions.

Protection coverage summary

This service is part of our intellectual property and technology practice.