Design: An Increasingly Valuable IP Right

Design, in addition to brand, is a key factor behind purchasing decisions in the marketplace. Faced with products with similar functions and characteristics, consumers often choose one product over another because of its appealing design. For this reason, design is an important driver of innovation as brand owners endeavour to attract the attention of consumers with new and attractive products. Recognizing this, INTA created the Designs Committee in 2016, and its relevance, along with the size of the committee, has been growing ever since.

Design protection has become an essential part of brand management and has a direct impact on a brand’s reputation and image, especially for companies for whom success in the marketplace is closely tied to the quality and character of their designs. A prime example today is smartphones and other consumer electronics. It has also become more common for counterfeiters to leave the brand name or logo off of otherwise fake products in order to avoid infringement liability. Protection for the underlying product design, independent of any trademark rights, has therefore become essential to a successful brand enforcement program.

As a result, design protection is an indispensable intellectual property (IP) right, particularly for consumer products companies, but also for brand owners concerned about protecting the appearance of their products from would-be copycats. The name given to these IP rights varies from one jurisdiction to another, but “design patents,” “industrial designs,” or simply “design rights” are the most common expressions used when referring to this form of IP protection.

As appreciation for the benefit of design protection continues to grow, the legal framework for the protection of designs worldwide keeps evolving. As with other IP rights, each country has its own legislation for design protection, and there are regional systems that apply to more than one country, such as the European Union’s Community design. And INTA, as an important player in the advocacy for IP rights, is actively contributing to the evolution of design rights through its Designs Committee.

As a global network dedicated to brand owners and professionals, one of INTA’s objectives is to achieve predictability in the acquisition and enforcement of design protection to the maximum benefit of brand owners and designers. To this end, it is not only necessary to have legislation that provides protection for designs born from new technologies, but also to have user-friendly IP offices that are capable of examining such designs. As such, the Designs Committee is providing board-approved recommendations on draft legislation and IP office practices to help achieve the best possible design registration systems and enforcement tools. In the last decade, the Designs Committee has focused on the development of 3D printing, the international harmonization of laws (to provide a comprehensible and affordable system for the international extension of design rights), and, more recently, the development and evolution of digital designs.

Indeed, the proliferation of digital devices and media in a highly competitive marketplace has led to a major increase in creativity and innovation in digital designs. Icons and graphical user interfaces (GUIs), as well as designs for projected, holographic, and virtual/augmented reality (PHVAR designs), are examples of designs created through new technologies. And, while you can’t touch and feel these designs, as you can with more traditional consumer products, these creations merit the same kind of IP protection as 3D designs. Many countries are moving in this direction, and, with the help of INTA, are better understanding the need for IP system improvements to accommodate new technologies. In this regard, the Association is drafting a white paper that examines trademarks in the metaverse and another on non-fungible tokens. Both are due for publication in the first quarter of 2023. The Designs Committee has provided input to ensure that the design perspective is covered in these papers.

The Designs Committee is currently working intensively on the legislative review process of the EU Community design system. The concept of design (to embrace more clearly the protection of digital designs), disclosure, spare parts, and fee structure are all open to discussion and review. This work is being carried out in close coordination with the European Communities Trademark Association (ECTA) and MARQUES, and INTA is seeking to maintain a common position before the European institutions where possible. ECTA, INTA, and MARQUES issued a joint paper on “the Legal Review on Industrial Design Protection in Europe” in July 2018, and a Response to final Commission consultation in April 2021. The project is currently under consultation, and INTA continues to work with ECTA and MARQUES to develop our comments with one voice.

In addition, INTA, through the work of the Designs Committee, continues to offer valuable input on legislative and practice developments that touch on design rights with several IP offices, including those in Brazil, China, and India. The Association is also working closely with the World Intellectual Property Organization (WIPO), as the Hague System for the International Registration of Industrial Designs, which WIPO administers, continues to evolve. The addition of China in 2022, as a member country of the Hague System, should be a particularly welcome development for brand owners, especially small and medium-sized enterprises (SMEs), as it can provide a more cost-effective option for the protection of designs in 94 countries.

As more and more IP offices continue to seek INTA’s input on design rights globally, the Designs Committee continues to be an important part of that advocacy on behalf of brand owners worldwide.

Although every effort has been made to verify the accuracy of this article, readers are urged to check independently on matters of specific concern or interest. 

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