Your rights once your design is registered: scope and limits

Congratulations, after going through the creation and registration stages, your design is now registered with the INPI! This official recognition gives you genuine property rights over the appearance of your product. But what does this right mean in practice? What actions can you actually prevent your competitors from taking? For how long is this protection valid? And are there situations where, despite your registration, you cannot prevent a third party from using a similar appearance?

It is essential to understand precisely the extent and limits of your monopoly. Not only will this enable you to exploit your creation with peace of mind, it will also enable you to know when and how to react to a possible copy, and to avoid legal action that is doomed to failure. The purpose of this article is to detail the scope of the exclusive right you have just acquired, its lifespan, and the main exceptions and limitations under French law that you need to be aware of.

The operating monopoly conferred by registration

Under Article L. 513-2 of the French Intellectual Property Code (CPI), registering your design gives you a genuine right of ownership. Like all property rights, it gives you first and foremost a exclusive right The right to exploit the protected appearance, and above all to prevent others from doing so without your authorisation.

The right to prohibit key acts

What acts can you actually prohibit? Article L. 513-4 of the CPI is very precise on this subject. Unless you give your consent (for example via a licence), any third party is prohibited from carrying out the following acts in relation to a product whose appearance is protected by your registration:

• Manufacturing : Produce objects based on your design.
• The offer : Offer these items for sale (in catalogues, on a website, etc.).
• Marketing : Sell or distribute these items.
• Importing : Bringing foreign-made items into France.
• Exporting : Sending items made in France outside France.
• Transhipment : Bringing counterfeit goods through France.
• How to use : Use the counterfeit product (especially in a professional context).
• Detention for these purposes : Storing counterfeit products with a view to selling them, using them, etc.

This list covers most acts of commercial exploitation. It therefore gives you extensive control over the commercial use of the appearance you have created and protected. For example, you can act against a competitor who makes a copy, but also against the shop that sells it, or the company that imports it for its own use.

Protection against identical AND similar

Your monopoly is not limited to prohibiting slavish, identical copying of your creation. That would be very weak protection, because a competitor would only need to change a few details to escape infringement. The law goes further.

Article L. 513-5 of the CPI specifies that the protection of your registration "extends to any design which does not produce a different overall visual impression on the informed observer"..

This brings us back to the notion ofkeen observer (this informed and attentive user of the sector concerned, whom we had seen for the own character condition).

If a competitor's product, while not strictly identical to yours, resembles it so closely that it does not create a different overall impression in the eyes of this informed observer, then there is counterfeiting. Your law therefore protects against close imitations, those that take on the essential characteristics that give your creation its distinctive character. The assessment is made on a case-by-case basis, comparing the overall impression created by the products.

Independence of good or bad faith (in civil cases)

An important point to note concerns the intention of the alleged infringer. In civil matters (claim for damages, prohibition, etc.), once your design has been published in the BOPI, the infringement is generally constituted by the simple performance of one of the prohibited acts (manufacture, sale, etc.), even if the third party had no intention of copying or was unaware of the existence of your right. Publication makes your rights enforceable against everyone, and the infringer is presumed to have acted in bad faith. In order to avoid liability, it is up to the infringer to prove any good faith (which is very difficult for a professional, who is supposed to be informed), but even good faith does not necessarily prevent an order to cease the acts and compensate the damage. In criminal cases, on the other hand, fraudulent intent ("knowingly") must be proven.

The duration of your protection

Unlike copyright, which has an extremely long duration, the protection conferred by the registration of a design is limited in time. It is essential to be aware of these deadlines if you are to manage your rights properly.

Protection in 5-year increments

Under Article L. 513-1 of the IPC, the initial protection granted by registration lasts for 5 years. This period begins to run from filing date of your application to INPI.

Can be extended to a maximum of 25 years

This initial 5-year protection is just the beginning. You can extend it (known as an "extension") for successive periods of 5 years. To do this, you need to apply to the INPI and pay the corresponding maintenance fees before each period expires.

You can extend your protection once to reach 10 years, then 15, then 20, and finally one last time to reach the maximum total duration of 10 years. 25 years old from the date of filing. After 25 years, specific design protection ends and your creation falls into the public domain. under this specific right.

The system of 5-year increments allows a degree of flexibility: if your design is no longer commercially successful after 7 or 12 years, you can simply decide not to pay the next extension fee, and your right will lapse. This avoids cluttering up the registers with unexploited protection.

Comparison with copyright and the benefits of cumulation

The maximum term of 25 years may seem short, especially compared with the term of copyright (generally, the life of the author + 70 years after his death). For creations that have a long commercial life (certain iconic pieces of furniture, classic jewellery, etc.), this limit can be a constraint.

This is where the accumulation of protection (discussed in our first article) makes perfect sense. If your registered design is also an original work protected by copyright, you can continue to defend yourself against copying on the basis of copyright, even after the 25 years of design protection have expired. Registration will have offered you strong, easily provable protection for the first few years (often the most critical commercially), and copyright will be able to take over from there.

The important limits of your exclusive rights

Your monopoly is not absolute. The law provides for a number of situations in which, despite your registration, you will not be able to prohibit certain acts carried out by third parties. It is essential to be aware of these limits so that you do not take action that is doomed to failure.

The classic legal exceptions

Article L. 513-6 of the IPC lists a number of acts that cannot be prohibited by the owner of a design:

• Acts performed privately and for non-commercial purposes : A person who makes an object based on your design for his or her own personal use, with no intention of selling it, is not committing an infringement. The two conditions (private AND non-commercial) are cumulative.
• Acts performed for experimental purposes : Using your design to conduct research or experiments is not prohibited.
• Acts of reproduction for purposes of illustration or teaching: Reproducing your design in a book, article or course is permitted, but under strict conditions: the registration and the name of the owner must be mentioned, the use must comply with "fair commercial practices" (no disparagement, no unfair competition) and it must not cause undue harm to the normal exploitation of your design.
• Use of equipment on foreign ships or aircraft : If a ship or aircraft registered abroad and fitted with parts based on your design enters France temporarily, you cannot ban it. The same applies to the import of parts for the repair of such craft.

Exhaustion of rights in the European Economic Area (EEA)

This is a fundamental limitation stemming from the principle of the free movement of goods within the EU (and the EEA, which also includes Norway, Iceland and Liechtenstein). The rule, set out in article L. 513-8 of the IPC, is as follows: once a product incorporating your design has been put into circulation (i.e. sold for the first time) in an EEA country, by you or with your consent (by a licensee, an authorised distributor, etc.), your design right is "exhausted" for this specific copy of the product.

In practical terms, this means that you cannot prohibit the free circulation of this copy within the EEA. You cannot prevent someone who has legally bought this product in EEA country A from reselling it in EEA country B, even if you market the same product there (perhaps at a different price). This is what allows "parallel imports" within the single market.

Two conditions are necessary for exhaustion:

1. It must have been first put into circulation by you or with your agreement. If an infringing product is placed on the market without your consent, even in the EEA, your rights are not exhausted and you can take action.
2. The first authorised entry into service must have taken place within the EEA. If you sell your products in the United States, for example, your right is not exhausted in Europe. You can therefore prohibit the importation into France of these products bought in the USA ("grey market"), because the exhaustion rule only applies at European level (we talk about "grey market").regional or community exhaustionand not international).

The "repair clause" for car parts

The automotive spare parts sector, in particular visible body parts (wings, bonnets, bumpers, headlights, mirrors, etc.), has been the subject of intense debate for years at European level. The challenge was to reconcile the protection of vehicle manufacturers' designs with the need to ensure competition in the repair market, in the interests of consumers and insurers.

France finally introduced a limited "repair clause" in the "Climate and Resilience" Act of 22 August 2021, amending article L. 513-6 of the IPC. Since 1 January 2023, the situation has been as follows:

• For glazing components : The rights of the manufacturer (holder of the design or model) can no longer be exercised against the manufacture or sale of spare parts intended to restore the vehicle to its original appearance. The glazing market has therefore been liberalised.
• For other visible parts (bodywork, headlights, mirrors, etc.) :
  • If the spare part is manufactured by thethe original equipment manufacturer who produced the part (the manufacturer's subcontractor), the manufacturer's rights cannot be exercised either.
  • If the part is manufactured by a other equipment manufacturer (independent), the protection of the manufacturer's design on this part is limited to 10 years from the date of registration (instead of 25 years). After this period, manufacture and sale by third parties become unrestricted.

This complex clause aims to strike a balance: it partially opens up the aftermarket to competition, while maintaining significant protection (particularly for the first 10 years for non-glazing parts made by independent manufacturers) for manufacturers who have invested in design.

Managing your rights: Assignment and Licence

Your registered design is not just a defence tool, it is also an economic asset that you can use to your advantage. Article L. 513-2 of the IPC explicitly states that you can transfer (sell) your right of ownership, or grant (grant a licence to operate) to a third party, generally in return for remuneration (a lump sum or royalties proportional to sales).

• La disposal implies a definitive transfer of ownership of the right.
• La licence is an authorisation to exploit, which may be exclusive (you are prohibited from granting other licences, or even from exploiting a given territory yourself) or non-exclusive. It is limited in time and often geographically.

It is strongly recommended that these agreements be formalised in written contracts detailing the precise scope of the rights transferred or granted (duration, territory, types of acts authorised, remuneration, etc.).

Crucial point: for these acts of assignment or licence to be enforceable against third partiesIn addition to the above, they must be registered in the National Designs Register (RNDM) kept by the INPI (article L. 513-3 CPI). Without such registration, for example, a licensee could find it difficult to take legal action against an infringer, or an assignee could see his or her rights called into question by a third party who had acquired rights from the original assignor without being aware of the first assignment.

A precise understanding of the scope and limits of your rights is essential if you are to exploit your designs with peace of mind and react appropriately in the event of copying. A good knowledge of these rules enables you to better define your commercial strategy, negotiate your licence or assignment agreements, and effectively target your actions against counterfeiting. Our firm can advise you on managing your rights portfolio and defending your interests.

Sources

• Intellectual Property Code (CPI), articles L. 513-1, L. 513-2, L. 513-3, L. 513-4, L. 513-5, L. 513-6, L. 513-8.
• Law no. 2021-1104 of 22 August 2021 on combating climate change and strengthening resilience to its effects (for the reparation clause).
• European Union law (for exhaustion of rights).