How industrial designs should be protected and how much does it cost?

More and more entrepreneurs take interest in legal protection of industrial designs. And quite rightly so, as more and more consumers pay attention to appearance of products they see every day. Industrial designs not only attract attention of consumers to a specific product but also affect how the business which cares for image of goods it produces is regarded. Adequate legal protection of industrial designs enables to draw material benefits without any concern from their introduction into the economy.

Polish entrepreneurs can protect their industrial designs in many different ways, depending of the territorial range of their business. If they do not export their goods, then local protection granted by the Polish Patent Office is sufficient. If their business range is wider and also covers foreign countries, it is possible to protect an industrial design by one-off application for registration of an industrial design for the entire European Union filed with the European Union Intellectual Property Office (EUIPO) seated in Alicante, Spain. Further, also through a Polish patent attorney, an entrepreneur can protect his design internationally in the World Intellectual Property Organization (WIPO) in Geneva, Switzerland. In such case, protection covers specified countries which signed the so-called Hague Agreement.

It should be remembered that for an industrial design to be registered, such industrial design should first of all have the feature of novelty and such feature of novelty should be at an international scale. That means that before the date on the basis of which the priority right under registration can be claimed, the identical design has not been publicly made available through use, exhibition or disclosure in any other manner. The two exceptions are when: 1) an industrial design was disclosed to a third party which, either explicitly or implicitly, was obliged to maintain confidentiality; 2) an industrial design was disclosed during 12 months before the date as per which the priority right under registration is defined, if the disclosure was made by its author, his legal successor or, upon authorised person’s consent, and also if such disclosure was made as a result of abuse committed against its author or his legal successor (the so-called “relief in novelty”).

Further, an industrial design must have the so-called individual character. That means that a general impression made by specific design on an oriented user must differ from a general impression made on him by a design made publicly available before the date based on which the priority right is determined. When assessing individual character of an industrial design, the scope of creative freedom is considered during preparation of a design.

Obtaining the right under registration, the authorised person also acquires an exclusive right to use an industrial design for profit or professionally on the area on which such design was registered for a period up to 25 years. The authorised person can prohibit third persons production, offering, marketing, import, export or use a product in which such design is included or incorporated or storing a product for such purposes.

An industrial design can be protected for 5 years for an official charge of PLN 520 paid in the Polish Patent Office and EUR 350 paid in EUIPO. Regarding international protection of industrial designs amounts of official charges depend on countries designated by us.

Monika Kowalczyk