Fashion may never end, but when a company comes out with a new bag design, it’s always better for it to be different from anything else on the market. The same applies to a large number of industries: interior design, construction, cosmetics… All these creations belong to the category of applied art and can be protected by design law. But how can we ensure that a new product is different from existing ones, and what are the steps involved in conducting an effective prior art search?
Prior art searches in intellectual property registers
Design protection under sui generis law is subject to a filing procedure with the relevant intellectual property office, depending on the territory in which protection is sought. If this protection is granted, it gives the holder a monopoly on the use of the design for a period of 5 years (renewable several times, for a maximum cumulative period of 25 years).
However, obtaining this protection is not automatic; it is necessary to demonstrate that the design is unique and new in relation to what already exists on the market.
While these criteria may seem vague, how rigorously they are assessed depends on the sector of activity and the design itself. Is the shape imposed by the usefulness of the product? If so, more attention will be paid to detail.
Is it enough to search these registers to check for prior art and get a reliable view of the current market situation? Not quite so simple! Because not all protected products are registered with an intellectual property office.
Prior art searches outside registers
Like all creative works, designs are protected by copyright, as long as their originality can be proven. And in this case, IP registers are no longer enough! Copyright can be obtained without any formalities, so there is no inventory of works protected by copyright!
That’s why it’s essential to carry out in-depth searches in a wide range of sources, depending on the sector of activity concerned, to get an up-to-date overview of the market and identify potential prior art.
However, this research needs to be organised, as the field of possibilities is so wide.
Depending on the territory in which the product is to be marketed, you will need to prioritise the sources in that territory and focus on competitors who are established in that area. It is also advisable to start the search with what is currently still being marketed, and which is therefore more likely to give rise to potential disputes, before extending the prior art search to older designs.
The importance of regular monitoring of designs
Imagine having spent time designing a new product, drawing up a marketing plan and then realising, in the course of a preventive prior art search before the product is launched on the market, that similar products that can be claimed already exist… The loss of time and money is undeniable. This is one of the reasons why it is so important to keep up to date with new products that have been registered and are on the market, so that you can take account of the current market situation in your creative work and protect yourself against potential infringement or unfair competition claims, for example.
At Paperz IP, we offer a monthly design monitoring bulletin, which takes into account designs that have been filed with the EUIPO, WIPO and INPI (but also other registers if needed), as well as all the latest releases on the market. Our documentalists select the most relevant designs, i.e. those from companies with international reputations, those with particularly original features, or those that are anchored in current trends, to keep an eye on. The bulletin is currently available for the following product ranges: bags, eyewear, sneakers and jewelry, but may be extended to other products depending on demand. A useful partner to be up to date with the market situation!
Would you like to find out more about the bulletin? Click here!
