Requirements for and obstacles to registration of a design

Requirements for registration

Novelty

A design is deemed to have been made available to the public if

it has been published in the registration procedure or otherwise
it has been exhibited
it has been used in trade
it has otherwise become known.

For a design to be registrable it has to be new, although there are certain exceptions to this rule. A design is considered new if no identical design has been made available to the public before the date of filing of the application for registration or, if priority is claimed, the date of priority. Designs are deemed to be identical if their features differ only in immaterial details.

A design has not, however, become available to the public if the events referred to above could not reasonably have become known in the normal course of business to the circles specialized in the sector concerned, operating within the European Union, before the date of filing of the application for registration or, if priority is claimed, the date of priority. However, the design is not deemed to have become available to the public for the sole reason that it has been disclosed to a third person under conditions of confidentiality.

Furthermore, a design is not deemed to have become available to the public in a manner that prevents registration if the design for which protection is claimed has during the 12-month period before the date of filing the registration application or, if priority is claimed, the date of priority, been made available to the public

by the designer or a third person as a result of information provided or action taken by the designer ('grace period'); or
as a consequence of an abuse in relation to the designer. The creator of a design and his successor in title are considered equal.

The grace period provision makes it possible for example for the creator of a design to test a product on the market before he decides on its registration. It must however be taken into consideration that all countries do not have a similar provision, and that if the design is made available to the public before the filing of a registration application, this may prevent its protection abroad. In addition, it is possible that someone copies the design before its creator has filed a registration application, and that the copy is made available to the public and thereby becomes an obstacle to registration. Besides, making the design available to the public and the application of the grace period provision can bring about questions of interpretation and evidence. Therefore it is advisable that the design is not made available to the public in any way before an application for it has been filed with the NBPR.

If one wishes to protect the design with both a design right and a patent or a utility model, it is advisable that the applications are filed on the same day. An application for a patent or a utility model is an obstacle to registration of the application if the patent or utility model application in question is available to the public on the day of filing the design application and if the design is disclosed in the application.

Individual character

Besides novelty, a registrable design shall have individual character. A design is considered as having individual character if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been made available before the date of filing of the application for registration or, if priority is claimed, the date of priority. In assessing individual character, the degree of freedom of the designer in developing the design is taken into consideration. If, for example, the purpose of a product restricts the creator's possibilities of designing the product, more attention is paid to those features that allow such designing.

Normally, a design cannot be considered individual if it differs from previously known designs only in some minor details. In a design where the degree of freedom of the designer is limited, differences in details can be given more weight. When judging the individual character of a design, one must, however, remember that the most essential factor is the total impression of the design.

There is in other words no exact formula for establishing the individual character of a design; it must be judged case by case.

Novelty and individual character of a complex product

A complex product means a product which is composed of multiple components which can be replaced permitting disassembly and re-assembly of the product. There is a special provision on the novelty and individual character of a part of such a product. The design of a product which constitutes a component part of a complex product is only considered new and have individual character if

the component part remains visible during normal use of the product; and
the visible features of the component part fulfil in themselves the requirements as to novelty and individual character.

Normal use means the use by the end user of the product. It does not include maintenance, servicing or repair work.

A car, for example, is a complex product and its head lamp represents a part in a complex product. The head lamp can obtain protection only as to the part that is visible when assembled in the car; additionally, the visible part in itself must be considered new and individual.

Result of creative work

A design to be registered has to be a result of creative work. In practice, this means that simple and commonplace designs cannot be registered. Such designs comprise e.g. basic geometrical forms such as spheres or squares, and ordinary checks and stripes.

A design to be registered need not, however, be artistic, although works of art can also be protected by design right.

Obstacles to registration

A design is not be registered, if

it is contrary to public policy or to accepted principles of morality; or
it is identical with a prior design which has been made available to the public after the date of filing of the application or, if priority is claimed, the date of priority, and which is protected from a date prior to the said date by a design registered for Finland or by an application for such right.

Furthermore, a design is not registered if it without the proper permission includes:

the coat of arms, flag or other emblem or the designation or abbreviation of the designation of a state, municipality or an international intergovernmental organization, or a figure, designation or abbreviation of a designation that may be confused with such emblem, sign, designation or abbreviation of a designation;
an official mark or stamp of inspection or guarantee for the same or similar articles as those for which the design is intended;
anything which may be understood to be another person's protected trade name, trade symbol or trademark which has become commonly known in this country, or the surname, pseudonym or similar name or the portrait of another person, unless the name or portrait manifestly refers to a person long since deceased;
anything that may be interpreted as the title of another person's protected literary or artistic work, provided such title is distinctive, or anything which infringes another's copyright to such a work or his right to a photographic illustration;
anything that does not substantially differ from a design or utility model registered in Finland in another person's name.

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