Industrial Design protection in the E.U. and in the U.S.
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Industrial Design protection in the E.U. and in the U.S.: How do these legal systems differ?


Industrial Design protection in the E.U. and in the U.S.: How do these legal systems differ?

Every day and everywhere in the world, we are likely to come across articles that might fall within the notion of “industrial design”. Just think about the pieces of furniture decorating our apartment, such as lamps, sofas, tables, and chairs. However, the same articles of industrial design may obtain different protection depending on the country where such protection is claimed. This is particularly true for the E.U. and the U.S., which differ not only as to the requirements that a design must meet to be patentable, but also with regard to the strength of protection afforded. In other words, the fancy sofa you bought for your apartment, whose design is registered in the E.U., might not be patentable in the U.S.

What are the main differences between the E.U. and the U.S. legal systems in terms of industrial design protection?

Industrial design plays an important role in the E.U., where design is increasingly recognized a key to bring creative ideas into the market and to transform them into appealing products. To provide harmonization among the laws of the several member states on industrial design, the E.U. have enacted the Design Directive,1 and successively the E.U. Design Regulation.2 By contrast, in the U.S., there is not a uniform law on industrial design, which is mostly protected by patent law, copyright law, and trademark law.

The first dissimilarity between the E.U. and the U.S. systems concerns the requirements for protection. Under the E.U. Design Regulation, to qualify for protection as a “Community Design”, the design:

-must be new,3 which means that no identical design has been made available to the public before the application date of the claimed design;4

-must have individual character.5 This threshold is met if the overall impression the design produces on the so called “informed user” differs from the overall impression produced on this user by any design which has been made available to the public. The U. Design Regulation does not provide a definition of “informed user.” However, the Court of Justice of the European Union has recently clarified that the informed user can be identified in someone between the average consumer and the sectorial expert;6 and

-must not be solely dictated by technical functions.7 Indeed, when the sole function dictates the configuration of a product there has been no ornamental creativity. In addition, in such circumstances there is the risk to grant a monopoly on functional features that should be protected by patent law.8

If you believe that the requirements to qualify for protection as a Community Design are very (or even too) tight, you should consider that in the U.S. the conditions to obtain the patentability of a design are even more strict.

To be patented in the U.S., a design must be — not only new9 and non functional like in the E.U.,10 but also non-obvious, original, ornamental and properly disclosed.11

What does it mean exactly?

-The non-obviousness standard requires that the claimed design would not be obvious to a person of ordinary skill, who designs articles of the type involved.12 This requisite is more stringent than the European standard of “individual character” seen above.

-The originality requirement implies that the design does not simulate a well-known or naturally occurring object.

-The ornamentality standard is met when a design appeals to the eye as a thing of beauty.13 This in contrast to the E.U., where there is no requirement for “eye appeal.”14

-Finally, the disclosure standard requires a design to be illustrated, by drawings, in a way to provide a clear understanding of what the design looks like.

Both in the E.U. and in the U.S., the aforesaid requirements are examined during the design application.

This leads us to the second relevant difference between the two legal regimes: the administrative procedure for evaluating design applications, which takes place before the Patent and Trademark Office “PTO” (in the U.S.), and before the European Union Intellectual Property Office “EUIPO” (in the E.U.).15

In the E.U., applications are examined only for formal requirements, which means that the registration is denied solely if the design does not fall within the E.U.’s definition of Community Design, or does not comply with public policy or morality.16 By contrast, in the U.S., the PTO evaluates the design patent’s application on all substantive grounds. In other words, the PTO examines the “prior art” and evaluates whether the design is novel, non-obvious, original, ornamental, non functional and properly disclosed. If the patent application does not satisfy these statutory requirements, the application is rejected.17 The rejection of a design application by the PTO, might have a negative impact on the protection of a design patent in the U.S, because, whereas the E.U. grants protection to “unregistered industrial designs”,18 the U.S. does not afford protection for designs that are not patented.

What may be the consequences of these dissimilarities?

The comparison between the two legal systems suggests that industrial design enjoys greater protection in the E.U. than in the U.S. The U.S.’ numerous requirements to qualify for protection might, indeed, preclude the patentability of several articles of design. Thus, such articles might obtain no legal protection since the U.S. law does not contemplate un-patented designs.

Consequently, a design that is registered and very popular in the E.U., might not pass the bar for patentability in the U.S. and, thus, might have no protection at all. Of course, the global market would benefit, in terms of efficiency, from more uniform standards of industrial design protection. Therefore, hopefully in the future, a higher level of harmonization between the E.U. and the U.S. will be achieved also in this field of intellectual property.

  1. Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998.

  2. Council Regulation (EC) No 6/2002 of 12 December 2001, as amended by Council Regulation No 1891/2006 of 18 December 2006.

  3. Article 5 of the EU Design Regulation.

  4. In this context, “made available to the public” includes publications, exhibitions and use in trade. INTA, Fact Sheets: Community Design, available at [].

  5. Article 6 of the EU Design Regulation.

  6. Pepsico v. Grupo Promer Mon Graphic and OHIM, October 20, 2011 (Case C‑281/10), [].

  7. Article 8 of the EU Design Regulation.

  8. However, it must be considered that an article of manufacture necessarily serves a utilitarian purpose. In this regard, both the E.U. and the U.S. recognized that a design cannot be considered functional merely because the article itself has a function.

  9. In re Bartlett, 300 F.2d 942, 954 (CCPA 1962), the court clarified that a design is new “when the average observer takes the new design for a different, rather than a modification of already-existing design.”

  10. In the U.S., a design is not patentable if it is “primarily” functional, rather than ornamental, or if it is dictated by functional considerations. Therefore, this functionality requirement seems more stringent than the E.U. one, where design’s patentability is excluded if the design is “solely” dictated by functionality, and not if it is just “primarily” functional, like in the U.S.

  11. Under 35 U.S.C. 171: “Whoever invents any new, original and ornamental design for an article of manufacture may obtain a patent therefor, subject to the conditions and requirements of this title.”

  12. In re Nalbandian, 661 F.2d 1214, 1216 (C.C.P.A. 1981).

  13. Bonito Boats Inc. v. Thunder Craft Boats Inc., 489 U.S. 141 (1989), stating that to qualify for protection, a design must present an aesthetically pleasing appearance that is not dictated by function alone.

  14. A number of U.S. cases have also denied patentability to designs which are concealed during the normal use of an object, on the basis that ornamentality requires the design to be visible. Robert P. Mergers, Peter S. Menell, Mark A. Lemley, Intellectual Property in the New Technology Age, Sixth Edition, Aspen Casebook series.

  15. The former Office for Harmonization in the Internal Market “OHIM” is now named EUIPO, after the Regulation (EU) No 2015/2424 of the European Parliament and the Council amending the Community Trade Mark Regulation, entered into force on March 23, 2016.

  16. The substantive requirements (e.g., novelty, individual character, and non-functionality) are examined after registration, in case a third party challenges the validity of the design before the EUIPO or a court.

  17. The registration procedure in the E.U. is also considerably quicker and less expensive, than the U.S. design patent examination.

  18. This means that the E.U. design system gives protection to designs that meet the standard requirements, despite their registration. INTA, Fact Sheets: Community Design, available at [].

Vera Collavo

Vera Collavo is an Italian Attorney and a current LL.M Student at Fordham University School of Law, with a concentration in Intellectual Property and Information Technology Law. She is a staff member for the Fordham Intellectual Property, Media and Entertainment Law Journal.