Design law steals the show

Despite these challenges, demand for design rights continues to grow. According to figures published by the World Intellectual Property Organization (WIPO), the number of international applications for designs under the Hague System reached a record number in 2023, increasing by 1% compared to 2022. By contrast, the number of patent applications made through the Patent Cooperation Treaty (PCT) and trademark applications using the Madrid System both fell in 2023.

Two major developments in 2024 are set to give a further boost to design rights and likely make them even more attractive for designers and other creative businesses. November's diplomatic conference in Saudi Arabia will see representatives meeting to conclude and adopt a Design Law Treaty after many years of meticulous discussion. Concurrently, the EU is soon to reform design law protection for the first time since the present system was created in 2002.

The Design Law Treaty

The proposed Design Law Treaty does not include substantive harmonization. Instead, like the Patent Law Treaty and the Singapore Treaty on the Law of Trademarks, it aims to facilitate international design filings by bringing administrative procedures into closer accord.

According to the WIPO, this will make acquiring exclusive rights for designs "easier, faster and cheaper" both in filers' home markets and overseas. Some of those who stand to benefit most from this arrangement are small and medium-sized enterprises (SMEs) based in low- and medium-income countries, for whom design protection in foreign markets will become more accessible. According to the draft articles and regulations, which are still subject to discussion, the Treaty will cover issues such as filing dates, grace periods and disclosure, the amendment / division of applications including more than one design, renewals, priority and licensing.

If, as anticipated, the Design Law Treaty is agreed at the diplomatic conference in November, it will need to be acceded to / ratified by the required number of states or intergovernmental organizations for it to enter into force.

Revamping EU design law

The design reform package in Europe comprises a new EU design regulation and EU design directive. The final texts of both instruments were provisionally agreed in December 2023 and formally adopted by the European Parliament on March 14, 2024. They are expected to be endorsed by the Council and published later this year.

The legislation brings EU design law up to date in a number of respects. For one, the registered Community design (RCD) will be renamed the European Union design (EU design). Additionally, there will be changes to the definition of a design to accommodate non-physical (digital) goods and adjustments to fees to reflect the region-wide scope of protection and preserve the financial viability of national applications. Furthermore, a new symbol consisting of a D in a circle will be introduced to indicate a registration, equivalent to the R mark for registered trademarks.

Most notably, however, the revised directive includes a repair clause in Article 19. This aims to harmonize the law on spare parts in the EU for the first time. It provides that protection "shall not be conferred on a registered design which constitutes a component part of a complex product upon whose appearance the design of the component part is dependent, and which is used […] for the sole purpose of the repair of that complex product so as to restore its original appearance."

To benefit from this exemption, manufacturers or sellers of parts must allow consumers to make informed purchasing decisions by specifying the commercial origin and identity of the part manufacturer. However, third-party suppliers are not required "to guarantee that the component parts they make or sell are ultimately used by end users for the sole purpose of repair so as to restore the original appearance of the complex product."

The repair clause has been the subject of many years of debate, with strong views coming from the automotive industry. The solution reached aims to liberalize the spare parts market, allowing consumers greater opportunity to repair high-value goods. Given the sensitivity in this area, the legislation provides for an eight-year transition period.

IP designs the future

Whether a substantive examination is involved or not, designs can be very powerful IP rights that defend investments for products as diverse as furniture, buildings, fashion, electronic gadgets and even graphical user interfaces (GUIs). Given their ability to mold customer perception and contribute to a brand image, they can be the difference between a company that leads its market and a rival playing catch-up. Designs are especially valuable for new logos and packaging in that they can offer brand owners a period of coverage (typically 15 or 25 years) during which to acquire distinctiveness for trademark registration. Case law on designs is also growing, particularly in Europe, providing guidance and clarity for applicants and third parties.

As an example, the power of designs is well illustrated by the recent judgment of the Court of Appeal for England and Wales in Marks & Spencer PLC vs. Aldi Stores Limited. In this case, supermarket Marks & Spencer successfully enforced its registered designs relating to light-up gin bottles against rival Aldi. The decision to file four designs for the seasonal product had the outcome of effectively cutting out a competitor – and likely sending a warning to copycats in the market.

If there were any further doubt that the time for designs has come, consider that the United States Patent and Trademark Office (USPTO) introduced a new design patent practitioner bar on January 2, 2024. This allows practitioners to be admitted before the Office in relation to ornamental designs without the engineering and scientific qualifications required for the standard (combined utility, plant and design) patent bar.

With all these developments, 2024 has the potential to be the year design law truly takes to the red carpet.