The skull that became good design
In 1992, the Lindström family had an idea. They decided to start a sweet factory specialising in jelly babies and marshmallows. Mum Birgitta, dad Berndt and their two sons Ulrik and Stefan used the initials in their names and together set up the company BUBS GODIS AB. One of their strategies was that they would design all their own sweets to give them a unique position in the market. In their range, they now have moody jellyfish, purple cats and salt guns, but to ensure that their competitors do not copy their sweets, the designs should be protected. One of BUBS’s best-sellers is the skull, which is sold in various flavours and has its own Facebook fan club. In 2006, the design of the confectionery skull was protected by PRV and no other Swedish confectionery manufacturer can now produce similar skulls. Confectionery designs can therefore also be protected.
3.1 What can be protected via design protection?
Most products that we buy today have been designed so that they have an attractive appearance. In this context, design is a term that is frequently mentioned. The Design Protection Act was introduced in the 1970s and regulates designs. The definition of design is that it is the appearance of a product or part of a product. The appearance is determined by the product’s details or by details in the product’s decoration, particularly as regards lines, contours, colours, shapes, surface structures and materials.
Design rights cannot cover details in a product’s appearance which are exclusively determined by the product’s technical function. As regards purely technical aspects, see patent rights.
3.2 What is required in order to obtain design protection?
Design rights generally arise through registration. In accordance with an EU Regulation on Community design, protection can also arise without registration in certain cases (see section 3.9 International aspects). Subject to certain conditions, designs can also be protected in accordance with the Copyright Act (See also Chapter 4 Copyright and applied art).
In order for exclusive rights to be granted, the design must have novelty and have distinctive character.
The novelty requirement is somewhat less strict under the Design Protection Act than it is under the Patent Act (see section 1.2). As a general rule, a design cannot have been published previously, but there are a number of exceptions. Even if he or she has had the design published, the designer can apply for protection during the following 12 months. This novelty deadline, which was introduced into Swedish law in 2001, is also known as a “grace period”. Publications which so-called specialists within the EEA would not be expected to be aware of also do not count.
The requirement for distinctive character means that an expert user’s overall impression must differ sufficiently from previously known designs.
3.3 Who holds design protection?
The person who creates the design is called the ‘designer’. It is the designer who is entitled to register the design. The designer can transfer rights to another person or a company through agreements. It is important to be particularly aware of whether the design has been created jointly by a number of people.
3.4 How long does design protection apply for?
The period of protection applies for five years from the date of receipt of the application and can be extended for up to 25 years.
3.5 What uses of the design can be prohibited?
Design rights mean that no one other than the design holder can use the design without permission. The ban on use particularly covers the manufacture and sale of products in which the design is used. Other marketing, warehousing and imports and exports are also covered by the exclusive rights.
3.6 What protection is given to similar designs?
Design rights cover any other designs which do not give a different overall impression to an expert user compared with the registered design. It is therefore a question of the overall impression gained by people who have a certain level of familiarity with the products. Consideration must also be given to the amount of scope for variation which has existed, which can vary between different types of products.
3.7 What restrictions are there on design rights?
Private use which takes place without the aim of gain is not covered by the protection. The same applies to use which takes place for experimental purposes. Certain uses in the form of quotations and teaching situations are also exempted, if it takes place in accordance with good practice.
3.8 Possible recourses in the event of design infringement?
In Chapter 5, you can read about the recourses which a right holder has open to them if someone else utilises their rights. The recourses are very similar within the various intellectual property laws.
3.9 Design protection internationally
Registrations following the submission of an application to PRV pursuant to the Design Protection Act apply in Sweden. There is also an EU Design Regulation, which can lead to protection in Sweden. Protection pursuant to the Design Regulation can take effect in Sweden either through registration or through an unregistered Community design. Registration is carried out by EUIPO, which also registers Community trademarks; see section 2.9.
Other international agreements of importance are the Paris Convention and the TRIPs Agreement, which also apply to design protection; see the introduction and section 1.9.