In France, it is necessary to register with the INPI to obtain protection under French design law (Article L511-9 of the French Intellectual Property Code).
The applicant may be a natural or legal person. He/she must be legitimate, i.e., he/she must be the author of the creation which is the subject of the deposit or be authorised to make the deposit. It must be ensured that the depositor has a right, and if not, that he/she obtains the author’s agreement to file.
In the deposit, the applicant must be identified, and reproductions of the design must be included. The filing fee is €39, with additional fees of €23 per black and white reproduction and €47 per colour reproduction.
According to article L512-2 of the IPC, the INPI carries out an examination:
- Regarding the form, the INPI checks that there are no missing data, and above all, it checks that the reproductions are faithful and accurate. Reproductions can be drawings, photos or 3D renderings. The product must be presented on a neutral background, without annotations or other external elements. Each reproduction is equivalent to a view, so there are as many views as there are elements (e.g., front view, back view, open view, closed view, etc.). If the applicant wants to exclude certain parts that are unprotectable, he/she can do so by using dotted lines or blurring.
- As regards the substance, the INPI only checks that the design does not infringe on public order and morality. As seen above, challenging the validity of a design registration must therefore necessarily involve legal proceedings (long, costly, uncertain), which is could be a deterrent for third parties.
The registration is published in the Bulletin, and it is at this point that the applicant acquires his/her property right.
At the European Union (EU) level, Regulation (EC) No 6/2002 of 12 December 2001 protects registered and unregistered designs. The protection is valid in all 27 countries of the EU.
Indeed, the EU provides for protection to be granted without the need for registration. The substantive requirements are identical to those for a design registered under the national procedure. However, the duration and scope of protection differ from a registered design:
- • The protection of the unregistered design is limited to 3 years from the first disclosure, i.e. the first release to the public in the EU. No extension is possible. This protection period is much shorter than for a registered design (up to 25 years).
- The scope of protection is also limited, the holder of the unregistered design can only prohibit the commercial use of its product if it is an intentional copy, i.e., the third party has acted in bad faith with knowledge of the design.
This protection is, therefore, weaker since it is not easy to prove disclosure and bad faith on the part of a third party. Nevertheless, it is an alternative to registered design and, above all, another source of prior rights to be considered.
Given the novelty criterion and to ensure that you benefit from reinforced protection, whether in France or the EU, it is recommended that you file your design quickly to limit the risk of disclosure. In the meantime, and before any registration, it is important to keep the creation confidential from third parties, within the company, and with economic partners.
Indeed, Article L511-6 of the IPC confirms that “the sole fact that a design has been disclosed to a third party under an explicit or implicit condition of secrecy shall not be deemed to have been disclosed to the public”. Thus, in the context of negotiations, it is recommended to conclude a non-disclosure agreement in addition to establishing parallel proof of creation and possible improvements, using for example the Copyright.eu anteriority certificate..