Registering a design: the essential steps and procedure

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You have checked that your creation meets the conditions of novelty and specific characterAnd it's not excluded? Perfect! The next step in securing legal protection for the appearance of your product in France is to register your design officially. Unlike copyright, which arises automatically, specific design law is only acquired through registration, a formality that follows a well-defined filing procedure with the Institut National de la Propriété Industrielle (INPI).

This administrative step is crucial. It is this step that will give substance to your right, give it a definite date and make it enforceable against third parties. A well-prepared and correctly executed filing maximises your chances of obtaining solid protection that is easy to defend. Conversely, an error or omission can weaken your rights, or even compromise your overall protection. The aim of this article is to guide you through the practicalities of registering your design in France: who can register, what you need to prepare, how the procedure works at INPI, and what strategic options you need to consider, particularly with regard to publication of your design.

Preparing your application

Before embarking on the online procedure on the INPI website, it is essential to prepare your application in detail. Several key points need to be anticipated.

Who can register? The question of ownership

According to Article L. 511-9 of the French Intellectual Property Code (CPI), the right to register belongs to the "creator or his successor in title.

• Le designer is the natural person (or group of natural persons) who actually designed the appearance of the product.
• L'causing is the party to whom the designer has transferred his rights. In most cases, this will be the company for which the designer works or to which he has sold his rights.

It is essential to clarify this question of ownership before filing. If the design was created by a employeeThe situation deserves particular attention. Unlike employee inventions, where specific rules exist in the Code, the law on designs and models is silent. The majority view, in line with copyright law (which also often protects such creations), is that the right to a design or model arises on the life of the employee creator. In principle, therefore, the employing company must assign this right by means of a clear contract in order to be able to register validly in its own name. Failure to settle this question in advance can lead to subsequent disputes over ownership of the registered design.

A legal entity (company, association) can perfectly well be the applicant and holder of the right, provided that it is the legitimate successor in title of the natural person creator.

Representation of the design: the crucial element

This is undoubtedly the most important part of your application. The protection conferred by registration will cover exactly on what is shown in the graphic or photographic representations you provide. The INPI does not examine the substance (novelty, specific character), but the quality and clarity of these representations are fundamental in defining the extent of your monopoly.

• Clarity and precision: The views provided (line drawings, photographs, etc.) must show the claimed appearance unambiguously, from different angles if necessary for a three-dimensional shape. The background must be neutral.
• What is protected : Use solid lines for the features you are claiming. You can use dotted lines to show elements of context that are not claimed.
• Multiple filing : If you have created several variations of the same design, or several products belonging to the same "class" (according to the Locarno International Classification), you can include them in a single application (up to 100 designs). This reduces costs and administrative procedures (article L. 512-2 CPI). Each design within the multiple filing will be protected individually.

A poor or ambiguous representation can make it difficult to defend your protection in the event of a dispute. It is often advisable to call on the services of professionals (designers, industrial property attorneys) to prepare views of optimum quality. This advice is all the more relevant if you are planning to protect your designs internationallywhere requirements may vary.

Other necessary information

In addition to representation, your application must include:

• L'full identification of the applicant (name, address, legal form if company...).
• If applicable, identification of the creator, if different from the applicant.
• La product designation to which the design is intended to be applied. The class (and possibly the sub-class) must be indicated according to the Locarno International Classification, which arranges products by category (e.g. class 06 for furniture, class 02 for articles of clothing, etc.). This indication is mainly for administrative and research purposes; it does not affect the scope of protection of the appearance itself.

Registering with INPI

Once your application has been prepared, it is mainly submitted electronically.

The online procedure

INPI offers a dematerialised procedure via its e-procedures portal. You will need to create an account, fill in the forms online, upload your representations and documents, and pay the required fees. This method is now the standard way, faster and simpler than the old paper filing.

Filing fees

Registering a design is not free. Fees must be paid to INPI at the time of filing. The amount varies according to :

• From number of models included in the deposit (a basic fee for the first model, then degressive fees for subsequent models in a multiple deposit).
• From the whether or not to request an adjournment of the publication (see below).
• From type of reproduction (black and white or colour).

We also need to anticipate maintenance fees (or extension fees) that will have to be paid every five years if you wish to keep your protection beyond the first period. It is important to budget for these costs over the expected lifetime of your protection.

Option: simplified filing

For certain sectors of activity where designs are renewed very frequently and collections are numerous (typically fashion, textiles and jewellery), the law provides for a simplified filing (article L. 512-2, paragraph 3 CPI). This procedure makes it possible to register a large number of designs (up to 100) with fewer formalities at the outset, in particular by providing a single overall representation or a sample.

Please note, however, that publication of this simplified filing is automatically deferred for 30 months. For protection to last beyond this period, the owner must regularise its filing at the latest 6 months before the end of this period, by providing conforming individual representations for each model and by paying the corresponding fees. Failing this, the rights are lost. This is an interesting option for rapid and less costly initial protection, but requires particular vigilance in the future.

Examination by INPI and registration

Once you have filed your application and paid the fees, INPI will examine it.

A mainly formal examination

It is essential to understand that, in France, the INPI does not carry out no examination of the merits of your design application. Unlike patents, the Institute does not check whether your creation is really new or whether it has a distinctive character compared with what already exists. Its examination is limited to formal aspects:

• Is the file complete?
• Is the identification information correct?
• Are the images usable?
• Does the claimed object correspond to the definition of a design?
• Is the publication not manifestly contrary to public policy or morality (article L. 512-2 CPI)?

The fact that there is no substantive examination means that registration is generally fairly quick and less costly than a patent. But it also means that a design can be registered even if it is not valid in terms of the criteria of novelty and distinctiveness. Validity will only really be examined later, in the event of a dispute before a court.

INPI decision and registration

If the formal examination is satisfactory, the INPI proceeds with theregistration of your design and registers it in the National Designs Register (RNDM). Under article L. 511-9 of the CPI, this registration officially confers on you the following rights ownership of the registered appearance. The right takes effect retroactively to the date of the initial filing of the application. INPI will then issue you with a registration certificate.

If the INPI detects a formal irregularity or a reason for rejection (e.g. application does not comply, subject matter contrary to public policy), it does not reject the application immediately. It will send you a notification inviting you to put your application in order or to submit your observations within a given period. Only in the absence of a satisfactory response will the application be rejected.

Publication and postponement: a strategic issue

Registration is not the final stage. For your right to be fully effective vis-à-vis third parties, it must be made public.

Publication in the BOPI: making rights enforceable

Once registered (and unless you request an adjournment), your design is published in the Official Bulletin of Industrial Property (BOPI)Designs and models section. It is this publication that makes your right enforceable against third parties (article L. 512-2, paragraph 2 CPI). From this date onwards, no one is deemed to be unaware of your rights, and any act of unauthorised copying or use committed after this publication constitutes an infringement for which the perpetrator is liable (bad faith is presumed). Prior to this publication, you can only bring an infringement action if you can prove that the third party was aware of the existence of your registration (bad faith).

Postponing publication: keeping the secret temporarily

It may be in your interest for your creation not to be revealed to the public immediately after it has been registered, for example in order to prepare calmly for its commercial launch or to surprise the market. The law gives you the option, at the time of filing, of requesting a deferment of publication (article R. 512-10 CPI).

• Duration: You can request an adjournment for a period of up to 3 years maximum from the date of filing (or priority).
• Interest : During this period, your deposit remains confidential. This can be an interesting commercial strategy.
• Major disadvantage: Until the registration is published, your rights are not fully enforceable against third parties. You can only bring an infringement action if you can prove that the copier acted in bad faith, which is often difficult. In addition, it is essential to consider lifting the adjournment before it expires so that publication can take place, otherwise you risk losing your rights.

Whether or not to request an adjournment, and for how long, is a strategic decision that needs to be carefully considered in the light of your commercial situation and your protection strategy.

What if the registration is contested? Invalidity

As the INPI does not examine novelty and distinctiveness at the time of registration, it is always possible that a competitor or third party will challenge the validity of your registered design in court. Article L. 512-4 of the IPC states that a registration may be declared invalid if :

• It does not meet the substantive conditions (lack of novelty or distinctive character, form dictated by the technical function, etc.).
• The owner was not the creator or his legitimate successor in title.
• It infringes a prior right (other design, trademark, copyright, etc.).

This possibility of nullity a posteriori underlines the importance of carefully checking the protectability of your creation before to minimise the risk of your investment being wiped out by subsequent legal action.

The process of filing a design application requires rigour and attention to detail, particularly in the preparation of representations and in the strategic choices relating to publication. To ensure that your application is correctly formulated, to assess the risks and to maximise your chances of obtaining effective and solid protection, our firm will accompanies you in your dealings with INPI.

Sources

• Intellectual Property Code (CPI), in particular articles L. 511-9, L. 512-1, L. 512-2, L. 512-4, L. 513-2, L. 513-3, R. 512-1 et seq.
• Locarno classification (for product designation).
• INPI website (for up-to-date procedures and fees).

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