A session dedicated to design law at last week’s MARQUES Annual Conference in Stockholm focused on using disclaimers, and included a lively audience quiz.

The panel session, “You can handle visual disclaimers in designs” was chaired by Oliver Nilgen, Meissner Bolte, Germany, a member of the MARQUES Designs Team and included Laura Gisler, Aera IP, Denmark; Axel Beks, Atlas Copco, Sweden; and Silke Weiss, Senior Legal Officer, Hague Legal Affairs Section, The Hague Registry, Brands and Designs Sector, WIPO.

The panel provided tips on using disclaimers in design applications, which included:

• Clear specification of visual disclaimers in the description
• Use dotted or broken lines. Alternatively, use colouring, colour shading or shading
• Be careful with the use of blurring, circles or boundaries
• Be careful when including disclaimers for different parts of a product in the same application.

To demonstrate the tips, they asked members of the audience to identify which parts of actual designs were disclaimed base on images from the applications.

Introducing the session, Oliver said: “Design protection is relatively cheap and easy to file. The biggest enemy is the novelty requirement so your filing strategy should be carefully planned. “ He highlighted relevant decisions on disclaimers including EU General Court case T-757/22 Puma SE v EUIPO.

Silke said there is a section dealing with visual disclaimers in the administrative instructions for the Hague System. “It really depends on the product whether you want a visual disclaimer or a description,” she said, adding that registered trade marks appearing on the product should be removed or disclaimed from the design application.

The most important thing is that the examiner knows what is intended to be claimed. “The examiner does t know if it is claimed or not. It’s important to have a clear description. Be consistent across all reproductions. The examiners see every difference,” said Silke. Among the IP5 offices, there is a clear preference for using a description supplemented by broken or dotted lines.

Laura explained how registered designs can help to build value in a company, complementing patent rights. This can be important internally, for investors and for the public. “Design filings really helpful in communicating what we were about,” she said, adding: “They are one of many tools and central for protecting brand language.”

“On top of protecting R&D it’s also about the message you want to spread to customers,” said Axel. “Design rights protect against copying and convey to customers the company’s current and future look.”

Design case law

In a separate session in which speakers reviewed CJEU case law, Maarten Haak of Hoogenraad & Haak, The Netherlands, a member of the MARQUES Unfair Competition Team, and Inga George, boesling IP, Germany, Co-Chair of the MARQUES Designs Team, reviewed several design cases:

• T-647/22 Puma: In this design case, an application for an RCD was refused because it was previously disclosed by Rihanna on social media.
• Case T-537/22 Lego: The design was not purely technical. The invalidity applicant has to show lack of novelty or individual character.
• Case T-757/22 Puma v EUIPO/Road Star Group: The Court found that Puma’s designs did not produce the same overall impression as that produced by an RCD application for a trainer. It said that “the disclaimed features of the earlier designs … could be taken into account in order to assess the individual character of the contested design.”

The MARQUES Annual Conference took place in Stockholm last week and further reports are on the Class 46 blog. Next year’s Annual Conference is in The Hague from 16 to 19 September 2025.

The MARQUES Design Tracker has been updated with information on China, Hong Kong and Sweden.

The Design Tracker is an online tool that provides an overview of the filing requirements for national filings or International filings using the Hague System. The information can be accessed by clicking on a world map.

It covers key questions on design protection in 24 jurisdictions. The questions were selected by members of the MARQUES Designs Team and the answers submitted by experts in each jurisdiction.

The contributions on China, Hong Kong and Sweden are by Ai-Leen Lim, Susan Cheung, Xiofan Cheung and Sara Söderling of AWA.

You can access the Design Tracker on the MARQUES website here.

If you have any questions about the Design Tracker, please contact a member of the Designs Team.

EUIPO is hosting a webinar on “Transatlantic IP; the United States perspective on design patents for EU business” on Tuesday 18 June from 15:00 to 16:00 CEST.

The webinar is part of EUIPO’s series of Tuesday webinars and features Marianna Kondas of the EUIPO Institutional and Cooperation Department and Courtney Stopp of the USPTO.

EUIPO says that the EU and US are key geopolitical and trading partners and trade figures are at historical highs.

“Design rights are increasingly used by businesses on both side of the Atlantic to protect the appearance of products and thus secure a competitive advantage,” it adds.

The webinar will provide an overview of design protection in the US compared to the EU focused on the following questions:

• What are the design patent rights that can be registered at the USPTO?
• What are the main requirements of filing a design and what are the main differences with the EU system?
• How can you overcome office objections?
• Why is representation in the different jurisdictions important and what is the role of representatives in the US and the EU?

The webinar is aimed at EU and US businesses looking to protect their design portfolios at the USPTO and EUIPO and their representatives.

It is free to attend and you can register on EUIPO’s website here.

Earlier this month, EUIPO announced that DesignView’s Image Search now includes designs from all EU national and regional IP offices. This is designed to make it easier to find visually similar designs, improving user experience and efficiency.

The DesignView database has nearly 22 million designs from the EU and beyond. The Image Search feature was introduced in June 2023 and initially included RCDs.

Images can be uploaded or dropped into the search in jpg, png, gif or tiff formats.

Picture taken from DesignView website

On 14 March, the European Parliament formally adopted the texts for the new EU design regulation and EU design directive.

The texts were provisionally agreed with the Council on 5 December 2023. The Council must now formally adopt the texts and after that they will be published in the Official Journal.

More information on the regulation and the directive is available on the European Parliament’s website here and here respectively.

The design reform package aims to update definitions and fees for registered designs, which will become known as registered EU designs. It will also introduce a repair clause.

The MARQUES Designs Team continues to monitor the progress of the reform and will host a webinar on the topic later this year. If you have any questions in the meantime, please contact a member of the Team.

Photo shows WIPO headquarters in Geneva

There were 25,343 designs included in international applications under the Hague System in 2023, a record number and an increase of 1% on 2022.

The number of designs increased for the third year in a row, according to data published by WIPO.

The top country of origin of applications was Germany (4,517 designs) followed by China (3,758) and the United States (2,668). 

The number of designs filed from China increased by 46.9% while Türkiye saw an increase of 45.7%.

Samsung Electronics (544 designs in published applications) overtook Procter & Gamble (525) to become the top filer. They were followed by LG Electronics and Porsche AG (both 352) and Xiaomi Mobile Software (315).

According to the WIPO data, the largest share of total designs was in means of transport (11.2%), followed by recording and communication equipment (8.6%), furnishings (7.6%), packages and containers (6.9%) and household goods (5.6%).

WIPO has also published data on the Madrid and Hague systems in 2023. Read more on WIPO’s website here and on the Class 46 blog here.

There are less than two weeks left to submit applications for the fifth edition of the DesignEuropa Awards: the deadline is 15 March 2024.

The winners of this year’s awards will be announced at a ceremony in Riga, Latvia later this year in the following categories: The Industry Award, The Entrepreneurs and Small Companies Award, The Lifetime Achievement Award and The Next Generation Design Award (new category).

EUIPO recently announced the composition of the jury who will select the finalists and winners of all the categories. They are:

• Lorenzo Imbesi President, The Global Association of Art and Design Education and Research (Cumulus). Chairperson.
• Agris Batalauskis Director, Patent Office of the Republic of Latvia
• Ajda Bertok Designer and Co-founder, Remigo, winner in the "small and emerging companies" category of the DesignEuropa Awards 2023
• Michal Bonikowski Industrial Designer, finalist in the "small and emerging companies" category of the DesignEuropa Awards 2021
• António Campinos President, European Patent Office
• Raffaella Mangiarotti Designer and Co-founder, Deepdesign, winner in the "industry" category of the DesignEuropa Awards 2023
• Christina Melander President, Bureau of European Design Associations
• Hiroshi Okutomi Head, Hague Legal Affairs Section, The Hague Registry, World Intellectual Property Organization
• David Stone Global Head of Intellectual Property, Allen & Overy
• Päivi Tahkokallio Founder, Tahkokallio Design+, Chairperson of DesignEuropa 2021 Jury
• Isabelle Vérilhac Founder, Design With Isabelle, Chairperson of DesignEuropa 2023 Jury
• Charlotte von der Lancken, Founder and Designer, CVDLAB

Find out more about the jury members and the DesignEuropa Awards on the dedicated page on EUIPO’s website.