What you need to know about the novelty requirement in community designs

Do you want to register a design right? Then the design must have an individual character, or in other words the design must be sufficiently different from already existing designs. In addition, the design must be new and thus not previously made available to the public. This last point often entails unintended risks, because entrepreneurs sometimes do not realize how quickly they themselves can jeopardize their chances for protection. In this article, I explain what the novelty requirement means and why it is important to take care when making a design available to the public.

What is the novelty requirement?

The novelty requirement means that a design must be new to qualify for design protection. This means that the design must not have been previously disclosed in a way that allowed it to become known to so-called “insiders of the sector concerned. These insiders usually include persons professionally active in the sector in which the design falls, such as designers, producers, distributors and other professionals active in the relevant market; however, there is an important exception: the design must have been disclosed in a manner that would have allowed it to become known to the so-called “insiders of the relevant sector.

However, there is an important exception: the so-called grace period of 12 months prior to the application date. Within this period, a design can be disclosed without affecting the novelty of the design. However, if a design is disclosed more than 12 months prior to the registration date, it is no longer considered new and cannot be registered as a design. This rule is intended to allow designers to test or promote their creations before applying for protection without risking losing their rights.

This seems like a simple rule at first glance, but in practice it still sometimes goes wrong. For example, novelty can already be undermined by a public presentation, publication in a brochure, participation in a trade show or even a simple post on social media.

Example: Rihanna’s Instagram post and the Puma model

A well-known example in which the novelty requirement comes into play is Puma’s model of the so-called “Creeper shoe. This design was declared invalid because it no longer met the criterion of novelty. What went wrong? Singer Rihanna, who was collaborating with Puma at the time, shared a photo on Instagram more than 12 months before the model registration showing her wearing the Creeper shoes.

Although the post appeared innocuous, it proved fatal to the model registration. Indeed, the EU General Court ruled that the Instagram post had to be considered a disclosure of the design, as the shoes were clearly visible in the photo. Moreover, the General Court found that this disclosure had made the design known to industry insiders such as designers and fashion industry professionals. This was reinforced by Rihanna’s notoriety, as much attention is paid to what she wears, which further increased the visibility of the design.

Because the disclosure occurred more than 12 months prior to registration, the design no longer met the novelty requirement. As a result, the design could no longer be protected. This example highlights how even a spontaneous, well-intentioned action can have major implications for intellectual property protection.

So is there no protection at all for lack of novelty?

No, if your design cannot be protected as a registered design because, for example, the novelty requirement is not met then there are other possibilities. Even without registration, you can still claim a similar monopoly or exclusive right under certain conditions. This right is known as the unregistered community design. Note this right is limited though: the protection only applies for three years from the first disclosure.

So is that all? No, if your design sufficiently bears your own creative stamp, it may also be copyrighted. No registration is required for this. Nevertheless, we recommend filing an I-Depot with the Benelux Office for Intellectual Property (https://www.boip.int/nl/ondernemers/ideeen/i-depot-vastleggen). This officially records the date of your design or drawing. This can be crucial if you later want to prove when the design was created.

Tips regarding design disclosure

To ensure that your design continues to meet the novelty requirement, it is important to handle disclosure carefully. Here are some practical tips to help you:

•  Keep your design confidential until registration: Avoid sharing your design with people who should not necessarily have access to it until you have submitted your design registration
• Use non-disclosure agreements (NDAs): If you must share your design with collaboration partners, manufacturers or customers, make sure they sign a non-disclosure agreement.
• Register your design timely: Do not wait unnecessarily to submit your registration.
• Avoid spontaneous disclosure: Be aware that even an enthusiastic post on social media – by you or by others – can qualify as a disclosure and warn your employees or the parties you work with about this.

Questions?

Do you have questions as a result of this article or other questions regarding design law or intellectual property law?  Please contact one of our attorneys by email, phone or fill out the contact form for a free initial consultation.  We are happy to think along with you.