Novelty of a design

Novelty is the first of the two substantive requirements for the protection of a design, the other being individual character (caractère propre). Under Article L. 511-3 of the French Intellectual Property Code, a design is considered new if, at the filing date or the date of the priority claimed, no identical design has been disclosed, and designs are deemed identical where their features differ only in immaterial details. Article 5 of Regulation (EC) No 6/2002 sets out the same rule for the EU right.

Identity and immaterial details

Novelty is assessed by comparison with a single prior design taken in isolation: several earlier creations may not be combined to reconstruct the contested design. The prior design must be identical or almost identical, and differences that are imperceptible or have no bearing on the overall appearance are not enough to save novelty. This approach, more flexible than in patent law, where novelty requires strict identity of all features, in practice leaves it to individual character to exclude creations too close to the existing design corpus. A creation may thus be new without having individual character, whereas the reverse is inconceivable.

Novelty-destroying disclosure

Only disclosures prior to the filing or priority date count. Under Article L. 511-6 IPC, a design is deemed to have been disclosed if it has been made available to the public by publication, use or any other means, unless it could not reasonably have become known, in the normal course of business, to the circles specialised in the sector concerned operating within the European Union. A disclosure made to a third party under conditions of confidentiality is not taken into account. The twelve-month grace period further neutralises disclosures made by the designer, by the designer’s successor in title or by a third party on the basis of information they provided, as well as abusive disclosures.

Novelty in litigation

Registration involves no substantive examination, in France or at the EUIPO, so novelty is debated for the first time before the court or before the Cancellation Division. The defendant to an infringement action almost always raises lack of novelty by way of a plea or a counterclaim for invalidity. It falls to the defendant to produce prior designs bearing a reliable date, such as catalogues, publications, earlier registrations or bailiff’s reports of archived web pages, and to show that they were accessible to the public before the relevant date.

Key points

A design is new if no identical creation, apart from immaterial details, was made available to professionals in the sector before the filing or priority date. The rule applies one prior design at a time, without combination. Before any filing, searches should be carried out in the registers and on the market, the company’s own disclosures should be dated, and filing should take place within twelve months of them.

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This glossary entry is general in scope and does not constitute legal advice.

Dhenne Avocats is a patent litigation firm. Matters outside that field, such as trade marks, designs, copyright and IT contracts, are handled by practitioners the firm works with regularly, and by the firm itself when they arise in a patent dispute.

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