One of the key prerequisites for a product’s success in the market is its aesthetic appearance. The visual characteristics of a product make it more attractive to potential buyers, and as such, design contributes to the product’s market success. By protecting your industrial design, you gain the exclusive right to use it and the right to prohibit third parties from unauthorized use, copying, or imitation.
What is industrial design?
In everyday language, when we say that a product is well-designed, we usually refer to its external appearance. Industrial design specifically relates to the visual features of a product or its parts, especially concerning lines, contours, colors, textures, and the materials from which the product is made or decorated.
This intellectual property right protects industrial and craft products; if the products are not produced in an industrial or craft manner, they may be considered artwork and thus protected by copyright law.
Industrial design focuses solely on the aesthetic or decorative appearance of a product, distinct from its technical or functional features. It plays a significant role in a wide range of industrial, craft, and fashion products—ranging from furniture, toys, and household appliances to cars and car parts, clothing, and luxury items like watches and jewelry. Industrial design has a broad scope of application.
Territorial protection of industrial design
The protection of industrial design is tied to the territorial principle, meaning that the protection applies only within the country where the right has been granted. Therefore, by registering an industrial design, an individual obtains protection within the territory where the design is registered.
International protection can be achieved by submitting an application through the Hague System for the International Registration of Industrial Designs. An applicant seeking recognition of industrial design rights in the Republic of Serbia may file for international registration through our Intellectual Property Office or directly with the International Bureau of the World Intellectual Property Organization (WIPO).
A single application can cover more than 60 countries and can be used to claim priority rights over subsequent applications.
For European Union member states, holders of industrial design rights can submit an application for protection across the entire EU to the competent EU design registration office or through the Hague System for International Registration of Industrial Designs.
Legal framework for industrial design protection in the Republic of Serbia
In Serbia, we have the Law on Legal Protection of Industrial Design (Official Gazette of RS, No. 104/2009, 45/2015, and 44/2018—another law), whose key provisions will be explained in this article to introduce you to the concept of industrial design.
The Law on Legal Protection of Industrial Design regulates the acquisition and protection of rights to the external appearance of an industrial or craft product. The external appearance refers to the overall visual impression the product leaves on an informed user (these are individuals regularly exposed to such products).
We start with an example from our court practice: in a ruling by the Commercial Appellate Court, Pž 4903/23 from 2023, it was confirmed that, in determining the infringement of industrial design, the internal structure of the product is irrelevant, but its external appearance is. The external appearance of a product is a manifestation of its visual and spatial relationship, where the structure and function of the product are reflected in its external appearance.
How does the Law define industrial design?
Our Law defines industrial design as the three-dimensional or two-dimensional appearance of an entire product or a part of it, determined by its visual characteristics, particularly the lines, contours, colors, shape, texture, and/or materials from which the product is made or decorated, as well as their combination.
This applies to industrial or craft products, including parts intended to be assembled into a complex product, packaging, the overall visual identity, as well as graphic symbols and typographic characters; computer programs are excluded and covered by copyright protection.
Examples of international protection
To better understand the types of visual characteristics that can be protected through industrial design registration, we will provide a few examples.
Yves Saint Laurent Women’s Handbag
The registration of the women’s handbag design submitted by Yves Saint Laurent was completed on August 16, 2022, under number D960565 (US ID). The application includes the name and headquarters of the applicant, as well as the name of the product’s designer. Upon opening the application, multiple images and descriptions are provided, including a perspective view of the handbag with the new design, front view, rear view, right-side view, left-side view, as well as top and bottom views.
It is noted that the YSL logo, depicted with dashed lines on the front of the handbag, is not part of the claimed design. However, parts of the bag shown with dashed lines represent stitches and are included in the claimed design.
Red sole: Trademark or industrial design?
Many are familiar with the longstanding battle of renowned designer Christian Louboutin to protect the red soles of his shoes, a victory he eventually won at the European Court of Justice. However, the red sole was ultimately protected as a trademark, not as industrial design, due to several key reasons.
The distinctive red sole serves as a brand identifier and a position mark, according to the European Court of Justice, which refers to the specific place where the color appears. This allows for a different kind of protection than industrial design. In other words, the red sole is equated with brand identification in the market and does not solely represent an industrial design, which deals with the aesthetic characteristics of the product.
The velvety texture of a lipstick core
As another example, we can cite a cosmetic product that is protected as industrial design. Under the international registration number DM/214 726 from April 21, 2021, and submitted by Parfums Christian Dior, based in Paris, the design of a product called ‘lipstick core’ was protected. The protected product is described as a velvet-textured lipstick core in red, with a note stating that the lipstick tube shown in the reproductions is not part of the design.
Exterior design of a car model
In 2020, Honda Motor Co. Ltd, headquartered in Tokyo, applied for the international protection of 8 products, which were registered under international registration number DM/211 203.
The document states that the protection applies to the exterior design of the car, including the front bumper, vehicle grille, rear bumpers, dashboard, vehicle’s center console, and interior trims.
What are the conditions for protecting industrial design?
Industrial design is protected if it meets two criteria: it is new and has an individual character.
What does it mean for industrial design to be new?
Newness means that the industrial design has not been made available to the public before the filing date of the industrial design application, or the date of priority if claimed. It must also not be identical to any earlier filed design that has become publicly available (except for insignificant details).
According to Article 7 of the law, an industrial design is considered to have been made publicly available if it has been published following registration, exhibited, used in commerce, or otherwise disclosed before the filing date of the design application, or the recognized priority date (if requested), unless there was no reasonable opportunity for specialized business circles in Serbia to become aware of these events in the normal course of business.
However, if the industrial design was disclosed to a third party under explicit or implicit conditions of confidentiality, it will not be considered publicly available. It also won’t be considered disclosed if revealed by the author, their successor, or a third party (based on information from the author or successor) within 12 months before applying, or if made public because of a breach of confidentiality relating to the author or their successor.
How important is it to keep industrial design confidential before registration?
These provisions of the law indicate that it is quite important to keep an industrial design confidential before registration, though there are some exceptions. For instance, if a third party obligated to confidentiality makes the design public, it would still not be considered publicly available.
Newness is one of the two main criteria for the protection of industrial design rights, so the design mustn’t become publicly available before registration. Some jurisdictions allow a “grace period,” meaning that registration is possible within 6 to 12 months of the design being made public (see the above-mentioned provision of our law).
This grace period concept is useful when a product with a certain industrial design is exhibited at fairs or events or published in catalogs and brochures. The grace period ensures that the industrial design does not lose its novelty during that time, although it still does not grant exclusive design rights.
A certain degree of caution is required since not all legal systems offer this possibility, so it is generally advisable to keep industrial designs secret as long as possible. Designers who reveal their designs to third parties before registration often resort to confidentiality agreements, specifying that knowledge of the industrial design constitutes a trade secret.
You can find basic information about confidentiality agreements in this article.
What does it mean for an industrial design to have individual character?
An industrial design is considered to have individual character if the overall impression it gives to an informed user differs from the overall impression any other design, made publicly available before the filing date or recognized priority date, would give. In determining individual character, the degree of freedom the designer had in creating the design will be considered.
Furthermore, if the industrial design of a product is part of a complex product, it will be considered to meet the novelty and individual character requirements if it remains visible during normal use of the complex product and if the visible features meet the specified conditions. Normal use refers to use by the end user, excluding maintenance, servicing, or repairs (think of car parts, for example).
What industrial design cannot be protected?
An industrial design cannot be protected if it does not meet the definition of industrial design under our law.
Additionally, it cannot be protected if it fails to meet the requirements of novelty and individual character, or if it was made publicly available before the design application was submitted, unless certain legal exceptions apply.
Protection is also excluded for designs dictated solely by technical function or that are contrary to public order and morality. For instance, a product’s external appearance determined purely by technical function (with one exception provided by law) cannot be protected, nor can designs whose publication or use would violate public order or accepted moral principles.
If someone without the right to protect an industrial design applies, that design cannot be protected. The right to protect an industrial design belongs to the author or their legal successor, as well as the employer. Foreign individuals and entities enjoy the same rights as domestic individuals if this results from international agreements or reciprocity.
Furthermore, a design cannot be protected if it incorporates a recognizable sign protected by law, allowing the rights holder to prohibit its use. Also, if protecting the design would infringe on someone else’s copyright or industrial property rights, it cannot be protected.
Moreover, if a design includes a public coat of arms, flag, or symbol, the name or abbreviation of a state or international organization, or religious or national symbols without authorization, it cannot be protected.
How long does industrial design protection last?
Industrial design rights are acquired through registration in the industrial design registry and last for 5 years. They can be renewed for periods of 5 years, up to a maximum of 25 years from the application filing date.
What are the rights of an industrial design creator?
According to a 2017 ruling by the Supreme Court of Cassation, Rev 318/16, industrial design is an exclusive right that allows the holder to use the design and prohibit others from doing so. The protection lasts 25 years from the date the application is submitted.
The author of industrial design has both moral and property rights. Moral rights include the right to have the author’s name mentioned in the application, documentation, and certificate of industrial design. Property rights include the right to benefit economically from the exploitation of the protected industrial design.
If the author is not the holder of the industrial design rights, the economic benefits enjoyed by the author from the design’s exploitation are determined by an agreement between the holder and the author.
However, there are some limitations. The holder of industrial design rights cannot prohibit third parties from performing actions for private, non-commercial, experimental purposes, or for teaching or citation purposes, provided such actions align with fair competition practices, do not unjustly harm the normal exploitation of the industrial design, and the source of the design is cited.
Note: This text does not constitute legal advice but reflects the personal opinion of the author.
