Designs Committee Publishes Worldwide Report on Protection of Unregistered Designs

INTA’s Designs Committee has published the results of a survey on the protection of unregistered designs in 30 jurisdictions. The report identifies jurisdictions that provide protection of unregistered designs and briefly analyzes the requirements to enjoy protection, the disclosure requirements, and the scope of protections of unregistered designs.

The Worldwide Report on Protections of Unregistered Designs revealed that seven (of the 30) jurisdictions provide protection of unregistered designs, namely China, the European Union, Israel, Japan, South Korea, Turkey, and the United Kingdom.

However, variations exist in the scope of protection among these jurisdictions. In China, for instance, the protection is limited to product packaging or decoration. In Japan and South Korea, protection exists by provisions under each jurisdiction’s Unfair Competition Prevention Act.

In four of the jurisdictions—the EU, Israel, Japan, and Turkey—the duration of protection is three years. Elsewhere, in China, it is indefinite, and in the UK, it is 15 years, or 10 years under certain conditions. Lastly, in South Korea, a special provision can be used to achieve indefinite protection when there is a large investment of time and money in R&D, design consulting, and marketing activities.

There are also differences in the calculation of the duration of protection. Except for China, Japan, and the UK, protection commences on the date on which the design was first made available to the public.

Only the EU and Turkey require first disclosure to be a local disclosure. Currently, the interpretation of this provision is not uniform among the EU member states.

In all seven jurisdictions, unregistered design rights enjoy the same scope of protection as registered designs, with the limitation that they can only be enforced against exact copies or undistinguishably similar designs, causing the same overall impression (substantially identical in Japan). Protection covers the entire product or parts of a complex product. In Japan, such parts must be separable from the product and tradeable independently. With respect to colors, most jurisdictions that provide for unregistered design protection do not take color into consideration except if it is considered to be a material feature of the design.

The Designs Emerging Issues Subcommittee initiated the groundwork for the survey during INTA’s 2018‒2019 Committee Term. In 2020, during the 2020‒2021 Committee Term, the Designs Enforcement Subcommittee of the Designs Committee conducted the survey of intellectual property practitioners in 30 countries. The final report was produced in November 2021.

While the Worldwide Report on Protection of Unregistered Designs does not intend to be a complete compendium of laws available for the protection of unregistered designs and is not a substitute for taking local advice, it does provide some guidance on the issues.

Although every effort has been made to verify the accuracy of this article, readers are urged to check independently on matters of specific concern or interest. 

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