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a. What is a model?

There is no general definition on industrial designs and models available. In general, it is considered that only the new aspect of a product can be protected as a model.

Only the exterior aspect of a product, namely: the 2 (design) or 3 (model) dimension form can be protected;

The form should be new, meaning that it should have distinct features which can be objectively determined when compared to existing products (either of what has already been filed, or of what is already known - cf. infra).

It should be related to aspects of a product, namely: a material aspect (for example it should not simply be an ornament for different product categories, unless all products bearing the ornament have been protected). In the Benelux, the law provides among other criteria that the product should have an utility purpose and that a sole ornamental form, such as for example a design for advertising, may not be protected by the legislation on designs and models. This utility requirement, however, does not exist in all countries. In Germany and in France, for instance, pure ornamental forms can be protected by the legislation on designs and models.

b. Can a design or model protection be combined with copyrights?

The answer is yes if the conditions made by each law are met. According to the Benelux law on designs and models, the protected form can also be protected by copyrights, whenever said form bears a distinctive artistic character. To simplify, let’s say that the required degree of creativity is different: it is lower to obtain a design/model protection than to obtain a copyright which requires a higher degree of creativity leading to the creation of real original works. Interpreting this criterion remains very arbitrary and is therefore the result of case law appreciation.

Furthermore, it should be mentioned that models showing a "distinctive artistic character" (as mentioned in Benelux law) can be further protected by copyrights when protection by the legislation on designs and models has expired, and this during all the author’s life and up to 70 years after his death without any additional renewal requirements.

c. Can this protection be combined with patent’s law?

Combining both protection is possible but all conditions put forward by both laws are to be fulfilled.

Patents protect a technological invention which means that the innovation has a technical effect, whereas all aspects necessary for obtaining a technical effect are excluded from protection through models.

One can imagine a product (for instance a machine) which fulfils the conditions for patentability and which can be produced with different exterior aspects, not essential to obtain the technical effect. Said different exterior aspects may theoretically be protected by a model. This refers to a theoretical possibility since the main interest lies in protecting the invention (by patents) rather than the multiple (possibly infinite) exterior forms obtained by it.

d. Can such a protection be combined with trademark law?

Yes, obviously, a product of which the exterior aspect has been protected by a model may be commercialised under a denomination protected by a trademark.

Certain trademark laws even allow for the protection of an exterior aspect or of the product’s package. The particular form of the COCA-COLA® bottle is protected as a trademark. The main advantage of trademark protection is the possibility for infinite renewal. However, 3D trademarks are not admitted in all countries and it is difficult to imagine protecting a new range of furniture or dishes by trademark law since the costs related thereto will be extremely high (cf. infra: multiple models).

e. Who is allowed to file a model?

The creator or his employer in case the model was created during an employment contract or the client in case said client ordered the model.

In case filing was made without the creator’s (or his entitled party’s) consent, the latter may claim his rights during 5 years following the date of publication of this filing and he may invoke without time limitation, cancellation of said filing.

f. Is it possible to have a preliminary search?

A preliminary search is possible but not very reliable. Most reliable searches are performed on names of competitors.

g. What is the international classification?

Products that form the object of model PROTECTION are categorised in a certain number of classes following the international classification method. The filing administration classifies its models according to the products involved.

h. Single or multiple application?

There are 2 types of applications: the single application and the multiple application.

Single Application :

This is related to the common filing of a single object.

Multiple Application :

Certain legislation (such as the Benelux and the international legislation) allow to protect several models by one application. In said case, a basic fee is to be paid as well as complementary fees (less than the basic fee) for each model exceeding the first. One may file up to 50 models (Benelux) or 100 (international) at once. According to Benelux law, it is not even necessary that all different models belong to the same international class of international classification, contrary to international models for which it is compulsory.

i. How to protect a model?

Models are protected by national or international application.

Because of the unification of the Model Law for the Benelux countries, a single filing with the Benelux Design and Model Office is enough to protect your design/model in the three Benelux countries (Belgium, the Netherlands and Luxembourg).

An international filing allows for protection in numerous European and extra-European countries. Contrary to the filing of an international trademark, no basic national filing is required for performing an international filing.

There is still no possibility to perform a community filing for models. A community decision is in progress but has not yet been adopted.

j. What are the requirements for obtaining a registration?

Formal requirements

In addition to the use of a specific form, the filing of models should be accompanied by the filing of representations of each model. As a general rule, it concerns the filing of reproductions in two dimensions, either designs or pictures. Practically speaking, most of the fees to be paid are publication fees calculated by "standard room" occupied by each reproduction. Following the type of product to be protected, it is appropriate to prepare suitable "reproductions" to be published according to specific criteria mentioned in the law (for example, for pictures: coloured and uniform background, copies in black and white and in colours when colours are claimed, ...). Additionally, depending upon the object to be protected, it is sometimes necessary to file pictures of the same object taken from various viewpoints.

Basic requirements

These requirements will be appreciated in the eyes of the Benelux law and of the recent European Directive n°98/71/CE entered into force on October 28, 2001.

The model should have a spatial form: as the exterior aspect is protected, it should indeed be a visible form developed in space (with 2 or 3 dimensions). As a result, non-plastic creations are excluded from protection (literary creations, musical creations, perfume creations, ...) and creations of an undetermined shape (ideas, categories, styles, methods, ...).

It has to be related to an esthetical form, i.e. which does not produce a technical effect and is not necessary for the product’s aim.

The model should be new.

The novelty presents 2 characteristics:

1. It is an objective novelty: does the product objectively bear distinctive features when compared to already existing products, in other words: Is there prior art ? Novelty may, however, already consists in:

• A new application of a known form (= transfer of the same form of one industry to another);
• The combination of new elements already known and already pertaining to the public domain.

2. This objective novelty requirement is however tempered by the fact that only two types of prior art are to be considered:

A prior model application : an identical model has already been filed and published.

A prior notorious model : this notoriety is limited as follows:

• It is limited in space: only E.U. territory is taken into consideration (before the above-mentioned Directive comes into force, the sole Benelux territory has to be taken into consideration);
• It is determined by a benchmark public: it is not necessary that the aspects of the involted product be known by the "large public" but only by "circles specialised in the concerned sectors".

The shape should be the one of a utility product : the design or model is thus not protected in itself but only to the extent of being incorporated in an object. In addition, objects that are purely ornamental are excluded from protection. To remind you (cf. supra), this restriction is not applied in all countries.

Excluded from protection:

Models contrary to public policy or morality.

Functional forms are excluded, namely: forms which are INDISPENSABLE for obtaining a technical effect. It is not compulsory that this effect be patentable. Additionally, if the same technical effect may be obtained by other means, this means that the shape we wish to see protected by a model is not indispensable (because there are other possible means) and thus protection by models is possible.

k. What is the duration of the protection?

The duration varies from one country to another. The above-mentioned Directive has established a 25-year protection (with possible renewals every 5 years) for all E.U. member countries. In other countries (for example Switzerland), the duration is 15 years with possible renewals every 5 years.

For models also protected by copyrights: cf. supra.

l. How to exploit the model?

An obligation of use of the model is nowhere mentioned. Indeed, protection by design or model only relates to the exterior aspect of a product and does not allow for protection of the object as such but only of a certain form which was given by the creator.

m. How to defend one’s model?

The registration of a model/design shall confer on its holder the exclusive right to use it and to prevent any third party not having its consent from using it. The aforementioned use shall cover in particular the making, offering, putting on the market, importing, exporting or using of a product having identical aspects or only secondary differences from the protected model/design.

There are however 3 limitations to the holder’s rights:

He may only oppose to acts performed with an industrial or commercial purpose (and to acts done privately, or for non-commercial or experimental or educational purposes).

A personal right of ownership is recognised towards third parties who have produced before the date of filing (or before the priority date) identical or similar products. This right allows third parties to continue their full exploitation of the model, except for import.

The law on models also recognises the rule of EXHAUSTION of rights, i.e. the right conferred by a model/design shall not extend to acts relating to a product put on the market in the E.U. by the holder of the right or with its consent.

Before starting an action against third parties, we advise you to consult your design/model attorney and/or a lawyer specialised in the Model Law.

Cease and desist LETTER

This may turn out useful but it is often dangerous as it may allow the infringer to destroy evidences related to the model’s unlawful exploitation.

Court Action

In default of a friendly settlement or in case cease and desist letter seems to be useless or dangerous, the model/design holder will take the matter to court.

In numerous cases an accelerated proceedure ("en référé") will be introduced, mostly to stop the unlawful model/design usage.

Other conservatory measures of proof can be envisaged, such as the sequestering of the commercialised products.

Said proceedings will be followed by regular proceedings where the holder of said model/design can claim the destruction of the counterfeiting products and of the instruments aimed at their manufacturing, the publication of the verdict and damages from third parties having used his model/design.

In Belgium no criminal sanctions are provided in case of infringement upon the law for models.