Have you invested time, energy and creativity in developing a unique design for your product or its packaging? This is an essential first step. However, for this appearance to benefit from the specific legal protection offered by the design law in France, it must meet clearly defined legal criteria. Not all visual creations are automatically eligible, and it is essential to understand these requirements before committing to a project. filing procedures with the Institut National de la Propriété Industrielle (INPI).
Knowing these conditions allows you not only to assess the chances of success of your application, but also to anticipate possible challenges from competitors. Indeed, a registered design can always be challenged for invalidity if it turns out that it did not meet the required conditions from the outset. This article sets out to break down for you the two fundamental criteria that your design must meet - novelty and distinctiveness - as well as the specific situations in which, even if these criteria appear to be met, protection may be refused.
First condition: novelty
The first requirement laid down by the French Intellectual Property Code (CPI) is novelty. This requirement may seem simple in theory, but in practice it requires careful consideration.
The principle: your creation must not be identical to what already exists
According to article L. 511-3 of the CPI, "a design shall be regarded as new if, at the date of filing of the application for registration or at the date of the priority claimed, no identical design has been disclosed"..
What is meant by "identical"? The law specifies that designs are considered to be identical if "when their characteristics differ only in insignificant details".. So it's not a question of absolute identity, down to the last detail. If the differences between your creation and a previous one are minor, negligible, to the point of not really altering the overall appearance, the novelty could be lacking. On the other hand, if your creation, while perhaps inspired by what already exists, has notable differences, even subtle ones, it will not be considered identical and will therefore, a priori, meet the condition of novelty. The assessment is made on a case-by-case basis, by objectively comparing the visual characteristics.
The essential point of reference is the "filing date" of your application at INPI (or the priority date if you have already filed the same design abroad in the previous 6 months). It is on this precise date that we check whether an identical design had already been made public.
What is "disclosure"?
Novelty is destroyed if an identical design has been "disclosed" before your filing date. But what is disclosure in the legal sense? Article L. 511-6 of the IPC sheds some light on the matter: "a design is deemed to have been disclosed if it has been made accessible to the public by publication, use or any other means"..
The concept is therefore very broad. Disclosure may result from :
- Publications : Press articles, commercial catalogues, brochures, internet publications (websites, social networks), patent publications or other design registrations...
- Uses : Product sales, window display, trade show presentation, public use, etc.
- Any other means : Presentation at a conference, distribution of samples without a confidentiality clause, etc.
The decisive factor is public accessibility. It doesn't matter where the disclosure takes place (in France or abroad) or what medium is used. What matters is that, prior to your filing, the public had the opportunity to become acquainted with an appearance identical to yours. Proving the exact date of this disclosure is often a major issue in disputes: prior art that is not dated with certainty cannot generally destroy the novelty of your application.
Be careful not to destroy the novelty yourself! The "grace period
This is a major point of vigilance for creators and companies: you can yourself, by your own actions, render your creation non-new and therefore unprotectable by a subsequent filing. If you start selling your product, presenting it on your website or exhibiting it at a trade fair before you have filed your application with the INPI, you are making a disclosure.
Fortunately, the law provides a safety net: the grace period. Article L. 511-6, paragraph 3 of the CPI states that disclosure is not taken into consideration if it has taken place "in the twelve months preceding the date of filing of the application or the date of priority claimed". AND if it has been made by the creator, his successor in title, or a third party on the basis of information provided by them (or following misuse).
In practical terms, this means that you have a period of 12 months after you start showing or marketing your creation to register your design or model with the INPI, without this initial disclosure being used against you to destroy the novelty. This is precious time for testing the market, for example.
However, this grace period does not protect you against deposits made by third parties. for if they become aware of your creation. What's more, it does not protect you against disclosure. previous to your own first disclosure. This is why, even with this delay, filing as soon as possible is often the safest strategy.
Does disclosure have to be global? An important nuance
The criterion of novelty is said to be "absolute": in theory, identical disclosure anywhere in the world, at any time, could destroy the novelty. Imagine finding a Roman vase identical to your creation in a museum... However, the law introduces an essential nuance to avoid absurd situations and guarantee a degree of legal certainty.
Article L. 511-6, paragraph 1 states that"there is no disclosure where the design could not reasonably have been known, according to the usual business practice in the sector concerned, by professionals acting in the European Union". before the date of your deposit.
This means that a disclosure that is very old, very confidential, or that took place in a very remote part of the world and has no echo in Europe, might not be considered as destructive prior art if it can be shown that it was not reasonably accessible to professionals in your sector operating in the EU. The assessment will depend on the circumstances: a textile design forgotten by a small Amazonian tribe is unlikely to have the same impact as a car model widely used in Japan but little known in Europe. The aim of this rule is to limit the search for prior art to what is reasonably accessible to players in the European market. For cross-border protection, specific strategies need to be considered, particularly at the level of theEuropean Union and international.
Second condition: proper character
Having a new creation (not identical to the existing one) is necessary, but not sufficient. Your design must also have a individual character. This is the second cumulative condition set out in article L. 511-2 of the CPI.
The principle: your creation must make a different visual impression
What is distinctive character? Article L. 511-4 states that"a design has a distinctive character when the overall visual impression it produces in the informed observer differs from that produced by any design disclosed before the filing date [...]"..
The idea here is no longer to check whether there is a carbon copy, but whether your creation, as a whole, is sufficiently different from what already exists. It has to offer something visually different, not just give the impression of 'déjà vu' or a banal variation on an earlier form. A design can therefore be technically 'new' (with a few minor differences from what already exists) but lack its own character if the overall impression it creates remains too close to a previous model.
The "informed observer" criterion
The assessment of this "different overall visual impression" is not left to the subjective judgement of just anyone. The law refers to thekeen observer. Who is the consumer? The case law specifies that it is neither an ultra-specialised technical expert, nor the average consumer who is not very attentive (as in trademark law). It is an intermediary figure: a user of the type of product concerned, who has a certain knowledge of the sector, who is attentive to the different forms existing on the market, without having any specialised technical skills. Their level of vigilance is higher than that of the average consumer.
It is therefore through the eyes of this informed and attentive user that the judge (or the INPI if an examination was carried out, which is not the case in France for the substance) will compare your creation with those that existed before to determine whether it is sufficiently different.
The importance of the "designer's margin of freedom
The assessment of specific character is not uniform across all sectors. The law (article L. 511-4, paragraph 2) specifies that"the designer's freedom to create the design shall be taken into account"..
This means that the more the designer is constrained in his or her design choices (by imperative technical standards, strong functional requirements, well-established stylistic codes in a sector), the more small differences or subtle variations may be enough to give the creation its own character. The informed observer, aware of these constraints, will be more sensitive to the details that reveal a creative choice, however small. For example, in the highly regulated field of car spare parts or in certain fashion sectors where trends are very marked, the designer's room for manoeuvre is limited; slight distinctive variations can then more easily confer a distinctive character. Conversely, in a field where there is a great deal of creative freedom, more marked differences will be needed for the overall visual impression to be judged as different.
Cases where protection is nevertheless excluded
Even if your creation appears at first sight to be new and to have a character of its own, certain characteristics or types of creation are excluded from protection under design law. It is essential to know what these are. Once registered, find out more about the extent and limits of the exclusive rights conferred by your design.
Designs contrary to public order or morality
As with trademarks and patents, article L. 511-7 of the IPC excludes from protection designs whose use would be contrary to public policy or morality. Examples include designs that incite hatred or violence, or use official symbols illegitimately.
Invisible features in normal use
A specific rule concerns "parts of a complex product" (i.e. a product made up of several replaceable elements, such as a car, a computer, etc.). Article L. 511-5 of the CPI specifies that the appearance of such a part is only protectable if, once integrated into the final product, it "remains visible during normal use of this product by the end user". (maintenance or repair is not considered normal use). This means that the appearance of a purely internal part, such as an engine component or the interior of a household appliance that is not visible from the outside, cannot be protected by a design, even if it is new and has a distinctive character. This rule is designed to encourage competition in the market for non-visible spare parts.
Shapes "exclusively imposed by the technical function".
This is a fundamental exclusion, provided for in article L. 511-8, 1° of the CPI. If the appearance of your product (or one of its parts) is totally and solely determined by the technical function it must fulfil, leaving no room for arbitrary creative or aesthetic choice, then that appearance cannot be protected by a design. The idea is to prevent design rights from being used to monopolise a technical solution, which could potentially be covered by a patent (protected for a shorter period).
The nuance is important: the exclusion only applies to forms of exclusively dictated by technology. If the designer had a choice of several shapes to achieve the same technical result, and made a specific formal choice (even if that shape also has a utility), then design protection remains possible. The mere presence of a technical function does not exclude protection; the function must be the same as the technical function. only the raison d'être of the shape in question. Recent European Union case law ("Doceram" ruling) confirms that it is necessary to prove that the technical function is the only factor that has determined the characteristics, the existence of other possible shapes being only one indicator among others.
The forms required for interconnection
Another exclusion linked to the technical function (Article L. 511-8, 2°) concerns the appearance of a product "of which the exact shape and size must necessarily be reproduced so that it can be mechanically associated with another product". (e.g. the specific end of a cable to connect to a specific device). The aim here is to guarantee interoperability between products of different brands and to encourage competition in the markets for compatible spare parts and accessories.
However, there is one important exception for modular systems if the purpose of the design is to enable "multiple assemblies or connections to products that are interchangeable within a modularly designed assembly". (think building set bricks), then the connection shape can be protected.
Checking whether your creation meets the conditions of novelty and distinctiveness, and whether it does not fall within one of the legal exclusions, is an essential step before investing in a registration. A preliminary analysis can help you avoid disappointment and unnecessary costs. Our firm can help you assess the protectability of your designs and define the best protection strategy, thanks to its expertise in intellectual property law.
Sources
- Intellectual Property Code (CPI), articles L. 511-2, L. 511-3, L. 511-4, L. 511-5, L. 511-6, L. 511-7, L. 511-8.
- French and European Union case law interpreting these provisions.
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