Design basics
Design protection guarantees you the exclusive right to use a design, which includes making, offering, putting on the market, importing, exporting or using the product in which your design is incorporated or to which it is applied. If you give your authorisation, third parties can use your design in their products.
What is design?
Design is defined by the visible appearance of a product. The visual features that form the design include the shape, configuration, pattern and ornamentation. Design is a product that is manufactured or handmade. Even if a product has a technical function, only its appearance is protected by design protection. The mechanics of how a product works or operates are not protected by designs rights, but may instead be protected using a patent. A product need not be in three-dimensional form to protected. It can be two-dimensional, such as a screen display on a computer, a graphic symbol, or a decoration on another product, such as wallpaper.
New and distinctive
New - must be new and individual in character when the application is submitted. It can not be identical to any design previously disclosed anywhere in the world. This includes anything published anywhere in the world or publicly used in Iceland.
Distinctive - can not be substantially similar in overall impression to any design previously disclosed anywhere in the world. This includes anything published anywhere in the world or publicly used in Iceland.
Why protect a design?
Registered design rights are property rights that can be valuable. Rights of design can be transferred, or others may be granted permission to use the design (licence). Registering a design means that the owner is better protected in the event of a dispute, e.g. to demand a court injunction. If the intention is to market a product with a unique design overseas, it is a good idea to have the design registered in this country. Moreover, this means that it is possible to take advantage of rules on priority as these allow the submission of applications in other countries within 6 months of the application date in Iceland. The design is then protected in the country in question from the date of the application in Iceland.
What design right gives you
Design protection gives exclusive right to use a design, which includes offering, making, putting on the market, exporting, importing or using the product in which the design is incorporated or to which it is applied. If the owner gives authorisation, third parties can use the design in their products. Registration does not give you exclusive rights to an idea or technical function. For example; if a board game is registered, design rights give exclusive rights to the appearance of the board, but not the idea behind the game and the rules.
The main condition for protection
For a design to get protection in accordance with design legislation, it must meet the condition of being new and having individual character. Design is considered new if it has not been made available to the public prior to the application date or priority date. When assessing whether a design is new, consideration is given to whether an identical design has been made available to the public and not whether a similar design can be found.
The Icelandic Intellectual Property Office only examines whether the formal requirements for the application have been met before the design is approved for registration. No separate search is made to determine whether a design can be regarded as new and having individual character. However, the Icelandic Intellectual Property Office may, on request and in exchange for a fee, examine whether a design possibly infringes on any design that is already protected. The concept of a “grace period” is an exception from the above condition that a design may not have been made available before the application date.
The period of grace provides the designer with the option of making a design public, including testing it in the market, within 12 months prior to deciding whether an application shall be submitted to the Icelandic Intellectual Property Office. The publication of design, at the behest of the designer, within these time limits does not have an effect on the novelty of the design.
It is safest to submit an application as soon as the design is fully formulated and before looking for investors or possible manufacturing partners. However, an application may be submitted up to 12 months after a design was made available without this curtailing its novelty.
Protection time
Registration lasts for a period of five years from the filing date of the application and may be renewed upon payment of a fee for four subsequent periods of five years, resulting in a total period of registration of twenty-five years. If the registration is not renewed, the design will cease.
How much does a design application cost?
All about fees. Application fees must be paid when applications are filed. The employees of the Icelandic Intellectual Property Office provide applicants with general information on the completion of applications.
Protection in Iceland or international
It is advisable to have a design registration in every country where you intend to exploit your design commercially. However, it will also be more expensive if a design is protected in many countries. The prices depend on the price list in each country.
Is a technical solution or logo also associated with the design?
If the design also has a completely new technical solution, consider applying for a patent. However, a patent has different requirements to design registration. For patents, novelty is an absolute requirement. For designs, this requirement is moderated, enabling making the design public for a period of 12 months before filing an application for registration. If there is a specific name or a logo for the design, consider applying for a trademark.