INDUSTRIAL DESIGN

ID

Industrial design refers to the planned shape for objects that will be manufactured in series.

Industrial design is a creation of form or aesthetics, unlike inventions, which are technical creations.

Legally, industrial design is defined as the appearance of the whole or a part of a product, which results from its characteristics, in particular, the lines, contours, colors, shape, texture, or materials of the product itself or its ornamentation.

Designs can be ornamental or functional, and those whose characteristics are solely dictated by their technical function are excluded.

An original or especially creative design can also constitute a copyright protected as independent intellectual property, compatible and cumulative with industrial design.

The material support on which the design is incorporated can be:

  • A product: an industrial or handcrafted item, including parts of a complex product.
  • A complex product: consisting of replaceable components.

Terminology.

Spanish law uses the term ‘industrial design’ in its regulation, whereas the European Union Regulation refers to the design as ‘Community designs’.


Requirements for protection.

  • Novedad: mundial. There is no prior identical design.
  • Singularidad. General Impression Rule: it produces a different overall impression on an informed user compared to any prior design, taking into account the Degree of Freedom of the Designer..
  • Visibility. Since the external appearance is the expression that defines industrial design, it is assumed to be perceived visually. Therefore, if the design is not visible during normal use, it will not be protectable.

Unregistered design.

An unregistered design is protected against copies for a period of three years from the first disclosure, with no possibility of renewal; it is therefore intended for designs with a very short commercial lifespan.

Registered design.

The right to register the design belongs to the author or authors.

The protection of industrial design is always territorial: Spain, the European Union, or other countries around the world.

The application for registration can be made within twelve months from the date of disclosure. The 12-month grace period allows testing the product in the market without losing novelty before deciding to register it.

The duration of the registration is five years from the date of application and is renewable for successive five-year periods up to a maximum of twenty-five years.

Design registration is subject to general registration principles: (i) publicity, (ii) opposition from third parties, (iii) priority of earlier designs, and (iv) successive transmission.

The registration procedure includes a formal examination and a quick official review to ensure that it is a design, in the legal sense, and that it does not violate public order or morals, without assessing the novelty or individual character of the design or conducting prior art searches.

In the registration application, a postponement of the publication of the design may be requested for up to thirty months or earlier if requested by the holder.

  • The registration of Spanish Industrial Designs is processed at the Spanish Patent and Trademark Office [OEPM], headquartered in Madrid.
  • The registration of Community Designs is processed at the European Union Intellectual Property Office [EUIPO], headquartered in Alicante.
  • International registration of designs in any other country can be requested directly through local professionals or through the Hague System administered by the World Intellectual Property Organization [WIPO], headquartered in Geneva, for member countries.

Effects of registration.

The registration of an industrial design entitles its holder to prohibit unauthorized use by third parties and, in particular:

  • Prevent the manufacture, commercialization, offering, importation or exportation, use, or storage for these purposes of the product incorporating the design.

Legal Regime.

  • Spanish Industrial Design: Law 20/2003, of July 7, on the Legal Protection of Industrial Designs.
  • Community Designs: Council Regulation (EC) No 6/2002 of December 12, 2001, on Community Designs.
  • Organic Law 10/1995, of November 23, on the Penal Code.”

Resolution of disputes.

Disputes that may arise in Spanish or Community Industrial Design can be resolved: (i)through arbitration, (ii) administratively, or (iii) judicially.

a) Against the registration.

The Spanish Patent and Trademark Office is competent to handle oppositions filed against the industrial design application. Once administrative avenues are exhausted, the Provincial Court and the Supreme Court have jurisdiction.

The European Union Intellectual Property Office (EUIPO) is responsible for handling oppositions against Community design applications, as well as procedures for invalidation and expiration. For review, cases are referred to the EUIPO Boards of Appeal, and for appeals, they go to the Court of Justice of the European Union in Luxembourg.

b.) Against unauthorized use.

For matters related to Spanish industrial design, the competent authorities are: the Commercial Courts, the Provincial Court, and the Supreme Court [Second Chamber].

For Community design matters, the competent authorities are: the European Union Trademark Court, headquartered in Alicante; the Provincial Court of Alicante [Eighth Section]; and the Supreme Court [Second Chamber].

c.) Arbitration.

Arbitration is provided for cases where the holder does not have the right to registration; when it is incompatible with a previously disclosed design, or when it incorporates a trademark or sign that is previously protected.

The final arbitral award has the effect of res judicata, the same as a final judicial ruling.

d.) Criminal defense.

The holder of a registered industrial model or design can pursue relevant criminal actions against anyone who manufactures, imports, possesses, uses, offers, or introduces into commerce objects covered by the industrial design.

Protect your design with all the guarantees.