French Registered Designs
The French registered design is now fully harmonized with the Registered Community Design Regulation.
CUMULATIVE PROTECTION: DESIGNS AND COPYRIGHT
In France, it is possible to benefit of a cumulative protection both by a registered design and by copyright. However this is reserved to residents of France and the European Union.
PROTECTABLE OBJECTS, SHAPES AND DRAWINGS
According to the French law, it is possible to protect by a registered design, the general appearance of any industrial or handicraft item produced by its contours, colors, shapes, textures as well as the material of which it is made or its decoration. Further, packaging, graphic symbols and typographic typefaces may also be protected.
RIGHT TO THE FRENCH DESIGN
Only the designer himself or his successor in title is entitled to the protection of a French design.
It is also possible for numerous designers to own jointly the right to a single design. In such a case, the exercise of the rights shall be governed by contractual agreement between the co-owners, or in the absence of such a contract, by the French law.
An employer has the right to the design if the design has been developed by an employee as part of his professional duties, unless otherwise provided by contract.
Consequently, a license or assignment agreement is necessary for the use of a design by a company if the designer was not an employee of such a company. The holder of a registered French design, however, is assumed to be entitled to the rights thereto.
THE REQUIREMENTS FOR DESIGN PROTECTION IN FRANCE
The following three main conditions are required for a valid French design:
- the design must be new;
- the design must have a proper character; and
- the design must not consist of features solely dictated by the object’s technical function.
Novelty of designs
The design is considered to be new if no identical design has been made available to the public before the filing or priority date.
For the purposes of making this determination, the designs shall be deemed identical if their features differ in only immaterial details.
The novelty of a design is therefore absolute: any publication or disclosure of an identical design anywhere in the world by any means whatsoever will result in a determination that a subsequent design is not new.
If the publication or disclosure is by the designer himself or his successor in title, a grace period of twelve months is provided during which any disclosure made by the designer himself or his successor in title does not destroy the novelty of the design. This twelve-month period is calculated as of the date of filing of the application or the date of priority. The same applies if the design was made available to the public as a consequence of an abuse in relation to the designer or his successor in title.
The absolute nature of the novelty requirement is slightly diluted, in that a design will not be considered to have been made available to the public if the disclosure of the design “could not reasonably have become known in the normal course of business to groups specialized in the sector concerned, operating within the European Community".
Consequently, while the novelty requirement appears to be an absolute requirement, this Article provides that it should in fact be viewed through the eyes of the so-called “specialized groups” within the European Community.
Proper character of designs
A design is considered to have a proper character if the overall impression it produces on the informed observer differs from the overall impression produced on such an observer by any design previously made available to the public before the date of filing or priority.
The determination of the proper character requires the courts to define the characteristics of a so-called "informed observer". This definition may differ depending on the field of use of the design in question.
The courts should, in assessing the proper character, take into consideration "the degree of freedom of the designer in developing the design." As a result of this provision, the courts may also consider the originality of the design.
The technical function
The design must not be dictated solely by its technical function. Design protection is not accorded to features of appearance of a product which must be reproduced in their exact forms and dimensions in order to permit the product in which the design is incorporated or to which it is applied to be assembled with another product such that each may perform its function. A design allowing multiple assembly or connection of interchangeable products within a modular system, however, is eligible for French design protection.
Thus, if the technical function is directly linked to the product’s appearance, it may not be protected by the design. In such case, the only means of protection is by a patent. This is certainly the case when a specific shape leads to a technical effect, the technical effect being inseparable from the shape of the product.
FRENCH DESIGN REGISTRATION PROCEDURE
The application for a registered French design may be filed at the French Patent Office.
The application must contain:
- a request for registration,
- the name of the applicant,
- the representation of the design,
- an indication of the product in which the design is to be incorporated or used,
- the classification of the product, and
- citation of the designer unless the designer has waived his right to be cited, in which case a declaration attesting such must be provided.
Several designs may be combined in one multiple application as long as the products belong to the same class.
Within six months of the date of filing a design application in a State party to the Paris Union Convention or member of the World Trade Organization, the applicant may claim the priority of this first filing date for its French design application.
Publication and registration of designs
The French Patent Office registers the design and, upon registration, publish the registered design.
Duration of the French design protection
A registered French design may be protected for a maximum of 25 years. The initial term of protection is 5 years, which may be renewed by four consecutive five-year periods.
THE INVALIDITY PROCEDURE OF FRENCH DESIGNS
Any interested party may bring an action for a declaration of invalidity of a registered French design before the French Courts.
The invalidity grounds are the following:
- lack of novelty or proper character;
- the appearance of the design has been dictated solely by its technical function;
- the holder of the design registration is not the real designer;
- the design is contrary to public order or accepted principles of morality; or
- the design is in conflict with a prior right, such as for example, a prior design, trademark right or copyright. It should be noted, however, that only the holder of such prior right may bring an action for invalidity on this basis.
The invalidity of the design may be pronounced for all or part of the design. In case of a decision declaring the partial invalidity of a design, the protection will be maintained for the modified design.
FRENCH DESIGN INFRINGEMENT ACTION
Rights conferred by a French design
The protection conferred by the registered French design includes any design for which the overall impression produced on the informed observer, considering the "degree of freedom" of the designer, is the same as that produced by the protected design.
This definition a contrario of proper character means that the holder of a French design may defend himself in an infringement action by asserting that his design, which is presumed valid and therefore to have proper character, must consequently produce a different overall impression from all earlier designs, including that upon which the infringement action is based, and therefore not fall within the scope of protection. Only a decision of the courts invalidating the allegedly infringing design could change this situation.
Other than in the particular circumstances described above, a registered French design grants to its holder an exclusive right allowing him to prevent any use of his design by any unauthorized third party.
Design Infringement proceedings
In France, a certain limited number of First Instance Courts have jurisdiction for design infringement and invalidity actions.
These courts have jurisdiction for the following actions:
- infringement actions or threatened infringement of French designs;
- actions for a declaration of invalidity of a registered French design; and
- counterclaims for a declaration of invalidity of a registered French design.
The competent court is the court near which the defendant is domiciled or has an establishment.
The action may also be brought in the court located in the place where the infringing acts took place.
The court procedure
In an infringement action, the court has to treat the registered French design as valid.
The alleged infringing party, however, may bring a counterclaim requesting the invalidity of the design. If such counterclaim is based on a prior model, copyright or trademark, however, the party must be the holder of such prior right.
After the court has held that the acts constituted an infringement of the French design, it may issue an order to cease all infringing acts and/or to seize of the infringing goods and may also order the payment of damages or other remedies. It may also issue a preliminary injunction or other preliminary measures prior to passing on the merits of the case.
The decisions of the lower court may be the subject of an appeal before an appellate court, which decisions may be the subject of a further appeal before the Supreme Court.