Despite being a pretty inexpensive and easy way to protect a new product, registered designs are not straightforward. They are not examined in any great detail, and as such the owner really has little idea how strong or weak his or her design is.
That's why understanding how design law works is important. A recent case heard by the General Court of the EU covers the all-important idea of "individual character".
For a registered design to be valid, the design needs to (i) be new, and (ii) have individual character. (i) is pretty straightforward. (ii) on the other hand is not. The basic requirement is that:
..."a registered Community design is to be considered to have individual character if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been made available to the public before the date of filing the application for registration..."
In a nutshell- it needs to look different. But how different? The answer depends (mainly) on two factors. Firstly,the law tells us that we need to consider what degree of freedom the designer had (more on that later). Secondly is the all-important "informed user".
We can demonstrate what all this means using the recent case heard at the General Court. Yves Saint Laurent registered a couple of designs to handbags (I've only reproduced one here, but they were pretty much the same):
H&M didn't like the look of this registration, and wanted to invalidate it by claiming that it lacked individual character compared to this earlier design:
So- what do you think?
Degree of freedom
If a designer is very restricted in his degree of freedom, details of the design become more of an influence on individual character. If you are designing a television, which is dominated by the screen, small changes can create a different overall impression. By contrast, a wall light, which has few design constraints (apart from the basic function) can be made pretty much any shape. Therefore there needs to be a more significant departure from prior designs to generate individual character.
H&M argued that when designing a handbag, the degree of freedom was large. Therefore a significant departure from the prior design would be required to bestow individual character on the YSL design.
The General Court agreed in this case. The design constraints were few- and therefore the degree of freedom was high. Not great news for YSL.
The reason this is important is that the attention of the user determines their overall impression. If the user pays little attention to details, then a significant departure would be required to bestow individual character. If the user pays attention to every detail, then small changes matter.
In this case, the General Court agreed that the informed user was:
"...an informed woman, who was interested, as a possible user, in handbags..."
Further the concept of the informed user is referring:
"...not to a user of average attention, but to a particularly observant one, either because of his (sic) personal experience or his extensive knowledge of the sector in question."
In other words, we have a handbag geek.
What this means is that small details become important. Therefore the court decided that the following features (to our handbag geek) produced a different overall impression:
This lead to the conclusion that:
"...the impression produced [by the YSL design] would be that of a bag design characterised by classic lines and a formal simplicity whereas, in the case of the earlier design, the impression would be that of a more ‘worked’ bag, characterised by curves, the surface of which is adorned with ornamental motifs."
What have we learned?
Design protection is a moveable feast. There is not a certain number of changes you can make to create a valid design, or indeed avoid someone else's design registration. Instead the validity and the scope of protection really depends on the product and the (geeky) "informed user" in that field.