Designs and models

The law of designs and models

The objective of the law of designs and models is to protect the aesthetic or ornamental appearance of an object, meaning its form. A design constitutes a two-dimensional creation; for a watch, this might refer to the arrangement of the numerals or other dial features. As far as the model is concerned, this represents a three-dimensional creation, such as the shape of a watch case. By definition, designs and models represent physical creations and so their ideas and concepts are excluded from their field of protection. Also excluded are the technical characteristics of objects, which are liable to come under the protection of the patents law, provided they meet the stipulated prerequisites.

Conditions for protection

The conditions necessary for a product to benefit from protection as a model are novelty and/or originality, which are designated in some countries by the terms individual or inherent character. These two conditions may be perceived differently according to each country and court of law. Novelty is determined in relation to the existing state of the art at the time of the application for registration. In other words, a model is new, if it can differentiate itself adequately from models existing at the time of the patent application. No identical model must have appeared, or have been accessible to the public via a publication, or by being in use or by any other means at the date of the first application to register the model. However, certain countries and territories, such as the United States and the European Community, allow a one-year period of grace as of the first disclosure in order to actually submit the registration application.

The condition for novelty must be fulfilled by the originality of the product, which is perceived in the product's overall visual impression on the user and must be different from existing models at the date of application submission. By way of example, in order to obtain global protection as a model, the combination of the different elements of a watch. i.e. the watch case (its thickness, its proportion in relation to the bracelet, the attachments linking it to the bracelet), the clasp, the bracelet, the bracelet links, the crown, the dial arrangement etc., must leave an overall impression of being different from watches existing at the time of its registration.

Duration of protection and territorial field of application

The duration of the protection of models varies according to the country: it can be as long as 25 years in European Community countries, 15 years in Japan, 10 years in China, 25 years in Hong Kong and 14 years in the United States.

The territorial field of application of the protection is limited to the country in which it is granted. Protection relating to a design or model can be applied for in various ways, in one or several countries:

by the national route: application of the rules of the legislation of the country concerned
by the Community route: according to the CE Regulation n° 6/2002 of the Council of 12th December 2001 on Community designs and models, enabling the obtaining of the same protection in the 25 countries of the European Union
by the international route: according to the Hague Arrangement and its common execution arrangement, enabling one single registration to apply for national protection in around forty countries.

Most countries have a national law of designs and models and envisage the possibility of obtaining protection for designs and models at the end of a registration procedure, according to specific conditions required. Legislation relating to designs and models differs in important ways from country to country. As far as the European Community is concerned, Directive 98/71/CE of the European Parliament and of the Council of 13th October 1998 on the legal protection of designs and models participates in the establishment of a legal system offering uniform and reinforced protection throughout the entire European Union. In parallel, at the international level, the Hague Arrangement helps to overcome the current disparities between the different member countries, by creating an international registration procedure for designs and models, common to all member countries, but leaving the examination of the fundamental conditions to the exclusive competency of the contracting countries included in the application. Japan, Taiwan and Korea, for example, have a very restrictive appreciation of the conditions for novelty and originality relating to previous existing art.

Regarding the possible opposition to be brought against models, national rights differ again here too. In Hong Kong, an opposition procedure exists and must be lodged within two months of the publication of the model in the official gazette. In many other countries such as China, Japan, Switzerland or Taiwan, such a procedure does not exist; nonetheless, the possibility of taking legal action to nullify a design or model is still envisaged.

The community model

A community model application is filed with the Office for Harmonization in the Interior Market (OHIM). It examines the form of the application before publishing it and, if it complies with the required conditions, registration is granted. The OHIM does not undertake any in-depth control of the application and limits itself to verifying whether or not the design or model undermines the public order and/or accepted moral standards. No possibility of opposition is envisaged during this procedure. However, any interested party can demand the nullity of the design or model.

Within the European Community, a design or model enjoys protection throughout a registration procedure, but also if it is not registered. The protection of the unregistered community model lasts three years from its first public appearance inside the European Community and applies without formality and without incurring any costs. On the occasion of its first appearance outside the European community, its owner will have no other choice but to opt for the protection of the registered Community model. The absence of formality is certainly a convenience for the owner of the unregistered Community model. However, such an owner will have more difficulty proving the existence of his right to take advantage of this, in the event of a lawsuit. He will have to prove the date of the first appearance within the European Community, as well as the unique character of the product.

The international model

Using the international procedure, any authorized applicant can lodge an application for a model in the 42 member countries of the Hague Arrangement at the International Office of the World Organization for Intellectual Property. The International Office carries out a check of the form of the application and then proceeds to publish the designs and models in the International Bulletin of Designs and Models and to register them. This publication replaces the equivalent national publications and allows each country, via its intellectual property office, the right to refuse protection of the designs and models, if they do not fulfil the requirements for protection, according to local legislation. The refusal of the Office of the country concerned must be notified to the International Office, within six months of the publication of the design or model.

Protection for designs or models

The protection of watches in terms of models facilitates protection against identical or similar copies, but also their differentiation from those of competitors. The owner of a registered model has the right to prosecute the use of this model by a third party, counterfeiter or competitor, and holds the exclusive right to oppose all non-authorized copies or imitations of his design or model. The counterfeiters will be faced with opposition to their registration certificates of the models in a counterfeiting lawsuit. Since the registered model benefits from a presumption of validity, it is up to the defendant to prove his prior claim and that the model is not valid. As for competitors, they will be forbidden from launching identical watches or watches producing a general impression similar to those protected by the law on models.

Differing from the registered Community model, the non-registered Community model confers on the owner the exclusive right to use it and to ban all third parties from using it without his consent, only if the contested usage results in a copy of the design or a protected model. In this case, it is up to the owner of the non-registered right to establish that the creator of the contested item knew the design or model divulged by the owner. The protection of the non-registered community model does not therefore extend to the item made in good faith by a third-party creator.

Designs and models law and copyright

In certain countries, the protection of an object in terms of design or model can also be protected as a work of art with a copyright. The latter applies by virtue of being created, without requiring or undergoing any specific formalities. Nevertheless, here also there are some differences depending on national laws. However, in the event of a dispute, it is necessary to be able to prove the existence of the work at a given date. This proof can be provided in different ways depending on the country: either by having obtained a specific date from a solicitor, or by having made a registration in an appropriate office, or yet again by having divulged the work to the public and being in a position to prove it.