Designs and Models
– Book V of the Intellectual Property Code.
Membership in International Conventions
– Convention Establishing the World Intellectual Property Organization (WIPO), since October 18, 1974.
– Paris Convention for the Protection of Industrial Property, Stockholm Act.
– The Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents (Apostille), in force since January 24, 1965.
– Hague Agreement Concerning the International Registration of Industrial Designs, Geneva Act 1999 in force since March 18, 2007.
– Locarno Agreement Establishing an International Classification for Industrial Designs, since September 13, 1975.
– WTO’s TRIPS Agreement, since January 1, 1995.
– Council Regulation (EC) No. 6/2002 of December 12, 2001 on Community Designs.
– Directive 98/71/EC of the European Parliament and of the Council of October 13, 1998 on the legal protection of designs.
Right to the design and model: belongs to the author or his successor in title.
Applicant: any natural person or corporate body, even without business in France, having its residence or headquarters in France, in the European Union or in a member country of the European Economic Area or through a representative established in this zone.
Naming of the creator: not compulsory.
Protection: filing is necessary; appearance of any product or part of product being visible during the normal use of the product. Protection by French law on copyright may also be claimed, under conditions.
Exception to protection: characteristics of the appearance exclusively dictated by technical function, “must fit” products, models and designs contrary to public policy and morality.
Conditions of registration: novelty and own character.
Novelty: when no identical design or model has been disclosed to the public prior to the filing/priority date.
Exceptions to novelty: designs or models that could not have been reasonably known according to the usual business practice in the interested field by professionals acting in the European Union prior to the filing/priority date; designs or models disclosed by the creator during the twelve-month period preceding filing/priority date. The “own character” is acknowledged when the overall visual impression produced by a design on an “informed observer” differs from that produced on him by any design or model disclosed prior to the filing/priority date.
Series application: an application may comprise several designs or models if belonging to the same Locarno class (up to one hundred).
Postponed publication: possible for maximum three years; shall be requested on the day of the filing. Postponement may be removed at any time.
Priority: may be claimed within six months from the first design application filing date.
Electronic filing: online filing is compulsory as of October 16, 2017.
Filing requirements for an application:
1. Power of representative (not required for a qualified French trademark attorney nor for an “Avocat” (French attorney-at-law));
2. jpg or bmp files for the reproduction of the model;
3. Nature of the model or design according to the Locarno Agreement, a short description may be provided;
4. Priority document within three months from the filing, along with the French translation thereof.
Examination: the application is examined only as to formal requirements. The French Office only examines lawfulness of the designs.
Availability: for industries which frequently renew the form and the packaging of their goods.
Official fees: the same up to one hundred reproductions for one Locarno class.
Duration of protection: three years.
Publication: designs or models are automatically kept secret for three years. Six months prior to the term of the three-year protection at the latest, and if the applicant switches to the protection of twenty-five years, he has to renounce to the postponement of the publication. The above-mentioned requirements must then be fulfilled. Even if the design and model application is confirmed as a registered design protected for twenty-five years, the protection by the French Copyright Law still remain if the design fulfills the copyright conditions.
Ownership: registration of a design is a prima facie evidence of ownership.
Duration: five years.
Extension: for further five-year periods up to twenty-five years.
Marking: not compulsory.
Assignments – licenses: have to be recorded on the National Register held at the INPI in order to be effective against third parties.
Modification of Protection after Registration
Cancellation: possible when the design or model is not new or does not have an “own character”. Only French courts may pronounce the cancellation of a design or a model. The cancellation actions of designs and models as a principal or counterclaim are not subject to any limitation period.
Infringement: making, offering, putting on the market, importing, exporting, transshipping, using, and possession for these purposes of a product comprising the design or model. Facts subsequent to filing but prior to publication of the registration of the design cannot be considered to have infringed the rights attached thereto. However, when a copy of the application has been notified to an alleged infringer, liability may be invoked for facts subsequent to that notification even if they are prior to the publication of the registration. The owner can assert his rights by bringing the dispute before the civil and/or criminal courts.
Civil Court: the good faith of the counterfeiter is indifferent in civil matters.
Criminal Court: as the criminal offense of counterfeiting is an intentional offense, the owner must establish the bad faith of the alleged infringer.
Penalties: the alleged infringer can face sentences of up to three years of imprisonment and/or a fine of 300,000 euros. These penalties are increased to 500,000 euros and five years imprisonment for products dangerous for health, for human or animal safety or products from criminal networks. A civil action may result in the payment of damages, the amount of which depends on the loss suffered (loss of profit, damage to the image, etc.).
Sanctions for infringement: fines, damages, confiscation, destruction of the infringing products or of the tools used to manufacture the counterfeiting goods and/or publication of the decision, depending upon the context.
Customs may seize the goods considered as an infringement.
Prescription: civil actions for infringement of design rights are prescribed within five years. The five-year limitation period runs from the knowledge by the right holder of the last fact enabling him to bring the action. This prevents the limitation period from running when the infringement was not known and seems to allow compensation to be claimed for all acts of infringement, regardless of when they occurred.
Upcoming Law Revision
Over the past few months, the European Commission has been working on a revision of the legal texts concerning Community designs. In particular, it is considering clarifying the interaction between design and copyright law, possibly introducing protection for spare parts used for repair purposes (already covered by French law), and reviewing the scope of protection and limits of design protection. The Committee has also been discussing improving the procedures (possible examination of the novelty condition) as well as a change in the filing fees (possibly for small and medium-sized enterprises).
This will therefore have an impact on French design law, as the French State's margin of appreciation will necessarily be reduced. In parallel, INPI and the French State have concluded an objective and performance contract for 2021-2024 in order to strengthen the national design system. Amongst other things, the following are discussed: the modernization of filing procedures in the digital age, the introduction of an administrative invalidity procedure against a registered design, and changes regarding filing fees.
An evolution of the design protection regime is therefore to be expected in France.