Design right on furniture: infringement or not?
The design of furniture can be protected in various ways. The best way is through design rights.
Design rights on furniture
The design right arises only after it has been registered. This means that you must register the design of the piece of furniture with the competent office. You can register the design within the Benelux, Europe or even internationally.
The model (or: the design) of a piece of furniture must therefore be recorded. This can be done by means of a photo, drawing or sketch. By registering a photo of a new piece of furniture, for example, the characteristics of the design are established and protected. Thus, characteristics such as:
- Material choice
These features are then protected by design rights. In order to register a design, the design must be new and have an individual character.
Is the registration successful? Then the design of the piece of furniture is protected for a number of years. Within the Benelux and Europe, protection lasts for five years and can be extended by five years to a maximum of 25 years. For contracting parties of the Hague agreement the protection last for five years and can be extended by five years to at least 15 years, depending on the national law of the contracting party.
Usefulness of design rights
Design rights help to protect the design of a piece of furniture. Because the holder of the design right has the exclusive right to sell, stock or produce the piece of furniture.
Other parties are not allowed to place pieces of furniture that are too similar to the protected piece of furniture on the market. Such as counterfeit products. This also applies to products which are similar to the protected piece of furniture, but which are not complete copies. In short: design law gives you the opportunity to take action against infringing parties. And to keep copies and other imitation products off the market.
This is how it works.
Action against infringements
First, a summons letter must be sent to the infringing party. Infringing parties can be wholesalers, sellers of the furniture or the manufacturer.
You often summon the other party:
- To cease and desist the infringement;
- Cease and desist the sale of the furniture;
- To cease production of the furniture;
- Destroy stock;
- Withdraw the furniture from the market (a recall);
- Signing of a cease and desist declaration;
- Payment of damages, loss of profits and/or legal costs.
In some cases, the summons is complied with. Or the parties discuss the dispute. Unfortunately, this is not always the case. If the infringing party does not want to cooperate, legal proceedings can be initiated. This can be an urgent procedure or an 'ordinary' procedure.
Functioning of a procedure
During proceedings, the judge will compare the design with the infringing furniture. The judge looks at whether the furniture creates the same overall impression. Can buyers see the difference between the pieces of furniture? Are the differences so great that they influence the purchasing decision?
To answer these questions, the judge looks at different aspects. Such as the size, materials used and colours of the furniture. A good example is the judgment of the District Court of The Hague of 14 August 2015. You can view it here (in Dutch).
Does the infringing product create the same impression as the design? Then it is an infringement. The owner of the design is therefore vindicated. The infringing piece of furniture will have to be taken off the market.
Frequently used defence
Often the opposing party will put forward the defence that the
design right is invalid. The other party does this by arguing that the design is not new and does not have an individual character. The design of the model would not be creative enough and would fit in with the design of furniture that already exists on the market.
The court must assess this defence. The court does this by looking at the so-called 'design heritage'. The design heritage is the design of all existing pieces of furniture. So the judge will look at whether the impression of the design differs from the general impression of the existing furniture. The judge will answer the following questions, as it were:
How does the model differ from other pieces of furniture already on the market?
To what extent is something new designed?
If the court finds that the design is new and has an individual character, the piece of furniture is protected by design rights.
No new model has been designed? Then the piece of furniture can still be protected by copyright.
Design law provides a solid basis for keeping counterfeit products or copies off the market. Do you have any questions about design rights on furniture? Then please contact us without obligation.