Protection of Industrial Design in the United States and in the EU: Different Concepts or Different Labels?

• Date: 01 March 2013
• DOI: http://doi.org/10.1002/jwip.12004
• Published date: 01 March 2013
• Author: Lena Schickl

Protection of Industrial Design in the United States

and in the EU: Different Concepts or Different

Labels?

Lena Schickl

University of Washington, Seattle

Industrial designs matter. It is undisputed that design is crucial for the success of a product. That is why companies are

using intellectual property laws in an effort to protect their industrial design. This article will describe how intellectual

property laws can protect design and compare the design protection regime in the United States and the EU. The

comparison will show that design protection is significantly different in the United States and the EU. Within the EU,

further harmonization is needed in order to provide for a strong coherent design protection. The paper will point out

that the ubiquitous requirement of non-functionality outside the realm of utility patent law in the United States is no

longer appropriate in a world where the most successful designs purposefully combine functional and aesthetic

elements.

Keywords design protection; community design; design patent; trade dress

Why Design Protection Matters

Think of Apple’s iPad. What picture comes to mind? Maybe you are already thinking of the design war

between Apple and Samsung in the United States and the decision Apple, Inc. v Samsung Electronics Co.,

Ltd., where Apple failed to get a preliminary injunction because the court doubted the validity of Apple’s

design patent due to possible lack of novelty.

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Or of Apple’s successful Community design law suit in

Du

¨sseldorf, Germany, where the company has been granted a preliminary injunction against Samsung’s

Galaxy, barring all distribution of its allegedly infringing tablet in the entire EU except for the

Netherlands.

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But let us first go back to the basic questions. Why do you think that people pay a lot of money for

these kinds of products? Because of the reputation of the company producing them? Because they want

to belong to the customer group that uses them? Because of the quality and functionality of the

products? Because of their appealing designs? The answer is the typical one for the legal profession: “It

depends.” But it is very likely that many or even all of these reasons affect the customer’s purchase

decision.

Nowadays customers are used to having a broad range of products to choose from. Most customers

base their buying decision not only on the functionality or quality of the product but also on its design. The

iPad example perfectly illustrates what a modern customer finds appealing: simple and elegant design

adorned with little or no ornamentation. These products enjoy a high reputation, which primarily derives

from the fact that customers perceive them as embodying the perfect combination of functionality and

appearance (Di Rienzo, 1993, p. 79). At the same time, industrial design is increasingly important for

a company’s success. Not only does it define the visual appeal of the product itself but also has an

essential impact on its competitiveness and commercial success within a certain market (Suthersanen,

2010, pp. 4–5). From a company’s point of view, design is often considered as a strong marketing tool,

and from a consumer’s perspective, it allows product differentiation as well as “socio-economic

differentiation among the consuming public” (Suthersanen, 2010, p. 4).

©2013 John Wiley & Sons Ltd 15

The Journal of World Intellectual Property (2013) Vol. 16, no. 1–2, pp. 15–38

doi: 10.1111/j.1747-1796.2013.12004.x

To stick to the example, Apple probably made sure to protect their designs with as many layers

of intellectual property rights as possible. The crucial question, however, is: what form of protec-

tion are simplistic designs like those by Apple eligible for? Further, what kind of protection is most

effective?

The answers to these questions are different in each case and jurisdiction. Industrial design protection

is debated all around the world and different jurisdictions offer different approaches. Their common

denominator is that legislators and courts see the need to offer protection for industrial design. But

especially when it comes to simplistic design having little or no ornamentation, there is a lot of controversy

as to whether and under which intellectual property laws protection can be granted. Modern designs are

often created in such a way that the “form [i.e., design] follows the function” (Afori, 2007–08, pp. 1105,

1122). From a designer’s perspective this may bring disadvantages in effectively protecting their work,

because legislators and courts are traditionally rather reluctant to offer protection to designs under

trademark or copyright law. This reluctance is based on the assumption that the purpose of these laws does

not really include design protection.

Therefore, it is no surprise that both the United States and the EU offer a specifically tailored form of

protection for industrial design, namely Community design in the EU and design patent in the United

States.

This article will describe and compare design protection in the United States and the EU. The

comparison will show that design protection is significantly different in the United States and the EU

Within the EU, further harmonization is needed in order to provide for a strong coherent design protection.

The paper will point out that the ubiquitous requirement of non-functionality outside the realm of utility

patent law in the United States is no longer appropriate in a world where the most successful designs

purposefully combine functional and aesthetic elements.

Terminology

Industrial design is easy to describe but hard to specifically define. It can be merely ornamental and

connote an element that is separable from the product itself, but it can also be a functionally irremovab le

element of the product. In any case it is usually neither purely artistic, since it is always aligned with the

function and technology of the product, nor is it purely functional (Heskett, 1980, p. 10).

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Due to this natural ambiguity (Suthersanen, 2010, p. 18) or hybrid nature of industrial design it is

difficult to classify industrial design within existing intellectual property laws (Reichman, 1992, pp. 281,

287). It seems plausible to consider it as artistic creation, but it can also imply a functional solution, and/or

it can stand for a particular company. Depending on the industrial design, it can, therefore, have much in

common with classical intellectual property rights, namely copyright, utility patents, and trademarks

(Afori, 2007–08, pp. 1107–8). Legislators have to decide whether industrial design can be sufficiently

protected under copyright, trademark, unfair competition, and patent law, or whether sui generis

protection is needed.

The definition of industrial design is crucial for that decision. Unfortunately legislators have not

agreed on a generally applicable definition of “industrial design.” In traditional legal terms it is described

as the external appearance of articles (Afori, 2007–08, p. 1107). The US Patent and Trademark Office

(USPTO) uses a much stricter definition. As a result, in the US industrial design “consists of the visual

ornamental characteristics embodied in, or applied to, an article of manufacture” (USPTO, Design Patent

Application Guide, 2012). Within the EU, however, industrial design is defined as “outward appearance of

a product or part of it, resulting from the lines, contours, colors, shape, texture, materials and/or its

ornamentation.”

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As a result, an appearance that is legally defined as design in the EU does not necessarily

constitute a design in US legal terminology.

Lena Schickl Protection of Industrial Design in the US and in the EU

©2013 John Wiley & Sons Ltd

16 The Journal of World Intellectual Property (2013) Vol. 16, no. 1–2