What can be protected as a design?
Design protection is available for the design of products or parts of products that are characterised, in particular, by an arrangement of lines, surfaces, contours or colours or by the materials used.
In order to qualify for valid design protection, a design must be novel and possess individual character. Moreover, as an important restriction, a design, or features of a design, which are solely dictated by the product’s technical function cannot be protected. The Design Act provides for some further grounds for exclusion of protection.
A design lacks novelty if an identical design has been disclosed prior to the filing or priority date anywhere in the world and if – as a further criterion – the design could have become known to the relevant Swiss market circles (producers, trade, consumers) under the circumstances of the disclosure. The disclosure of a design in foreign countries will therefore not necessarily in all cases destroy novelty of the design in Switzerland.
A design possesses individual character if it differs sufficiently from existing designs. Its overall impression is required to differ from existing designs in essential characteristics. Differences in details, even if numerous, may not be sufficient if the overall impression remains identical or similar.
For design protection in Switzerland, the disclosure of the design by the designer or his/her legal successor is (in contrast to patent law) not harmful under the aspects of novelty and individual character provided disclosure took place within twelve months before the filing or priority date.
At least one reproduction per design is required although it may be advantageous to file more than one reproduction, each illustrating different views of the design.
The reproductions should be of reproducible quality and may be in black and white or alternatively in colour if the colours are to be protected. The reproductions may only show the design on a neutral background. Moreover, the reproductions may not contain any explanatory remarks (e.g. dimensional data) nor may they include shadows.
We also need to know the name and the address of the depositor. If the depositor is not the designer, then the name and domicile of the designer must be given for a Swiss design deposit; a declaration of assignment is, however, no longer required. Finally, in order to classify the design according to the Locarno Convention, an indication should be given of the kind of products which the design represents or for which the design is intended to be used.
The novelty and individual character of a design are not examined during the Swiss registration procedure. The validity of a registered design accordingly can only be examined by a court in the course of litigation involving the design registration. Thus, a given design registration may subsequently be held void due to absence of novelty and individual character at the time of filing. Quite often, it will not be possible to reliably determine at the time of filing whether or not a design is novel and possesses individual character. Nevertheless, also in these borderline cases it will often be recommendable to register the designs, as design protection is dependent on registration and even a materially invalid design registration may have a certain deterrent effect. It is also noteworthy that in Switzerland there is a statutory presumption that a registered design was novel and possessed individual character at the time of filing. Accordingly, the burden of proof for lack of novelty and/or individual character is imposed on the adverse party, not on the design registration owner, in litigation involving the design.