Legal Updates

The level of difference required to prove novelty in a design will vary according to the product field and the possibilities for changes

December 7, 2023

Manufacturers of a head covering similar to the head covering recorded as a registered design, claimed the absence of significant innovations in the head covering recorded as a registered design and hence the absence of a place for its protection as a registered design.

The Court determined that the manufacturers infringed on the registered design due to apprehension of deception. Infringement of a registered design will be determined through the eye test, novelty test and deception test. While, as for the novelty test, it was determined that, as a general rule, the design should show a shape or decoration in the object that is significantly different from what was previously known, and minor changes accepted in the trade are not enough to give the design the novelty and innovation required by law. Nevertheless, in some areas the requirement of novelty or innovation will be satisfied even on the basis of fairly minor changes and additions and this when the design freedom of the designer is limited due to the role or nature of the product. Here, although some of the elements of the product originate from its function and the way it is used, the existence of other products on the market that fulfill the same function but are not similar to the protected product shows that the protected elements are indeed innovative and the imitation created by the designers constitutes an infringement of the registered design.