Concept of a Design
Art. 1 of the Swiss Design Act defines Design as a creation of products or parts thereof, which are specially characterised by the arrangement of lines, surfaces, contours or colour, or by the material used. The Design Act thereby provides protection for all externally perceptible features of a product’s appearance without focussing on its intended purpose. The Design protection does not cover production methods, practical use, or technical functions; these could if required be protected by a patent.
Requirements for protection
Art. 2 of the Design Act defines the requirements that have to be met if protection is to be granted. A Design must be new and unique, i.e. it has to be sufficiently distinguishable in its essential features and according to its overall impression from existing creations known to Swiss commercial circles.
The court of appeal of the canton of Basel-City decided in a procedure for provisional measures for the protection of a shower hinge at the beginning of 2014 that also a design, which is at first sight trivial, may be unique as long as it differs according to its overall impression in essential features from existing design. This decision is in so far important as Swiss design is typically defined by its visual simplicity. In addition, it is uncontested that when judging the uniqueness of a design one has to consider the de facto liberty one has to design a special product. This liberty is smaller in the case of a shower joint than for example in the case of a table lamp.Designs are not new when, prior to the filing date or priority date, the public was given access to an identical Design.
Any Designs that are solely characterised by the technical function of the product are, however, excluded from such protection (Art. 4 letter c. of the Design Act). This reason for exclusion aims to safeguarding that competitors are not prevented from using a design where no alternative shape exists to obtain the same technical effect.
However, the Swiss Institute for Intellectual Property (IGE) does not investigate whether a Design is new and unique during the registration process (Art. 24 para. 3 of the Design Act). Nevertheless, the fact that the Design is filed in Switzerland triggers the assumption of novelty and uniqueness. Said assumption may however be disproved at any time, e.g. in infringement proceedings by the purportedly injured party.
The protection requirement of novelty of a Design prior to filing has one important exception in Swiss Design law: For a period of up to twelve months prior to the filing date or priority date, the disclosure of a Design cannot be held against the person holding the right to the Design if third parties have improperly disclosed the Design to the disadvantage of the person entitled thereto, or if the entitled person has disclosed it him/herself (Art. 3 of the Design Act).
Filing and registration
The right to a Design evolves in two stages. With the creation of a Design, there is initially the intangible property and the prospective entitlement to a Design. This means that the person who created the Design or who acquired the right to the Design from the original holder is entitled to file the Design at the Swiss Institute for Intellectual Property in Bern. By filing and registering it in the Design Register, the entitled person will get the benefit of an exclusive right to the Design (Art. 5 para. 1 and Art. 7 para. 1 of the Design Act).
If the respective applicants have no office or residence in Switzerland, for filing a Design, they must nominate a representative residing there or provide a delivery domicile in Switzerland. Based on the Design application in Switzerland, there will then be a period of six months following the first filing, during which the protection can be extended to other countries claiming the first-filing date (the so-called priority) (see also International Protection).
Scope of protection and duration
The Design laws protect a Design in its overall impression conveyed by the essential features. It will bestow on the title holder the right during the protection term to forbid others to use for commercial purposes an identical Design or one that has the same essential features and thereby creates the same overall impression. Usage is defined as encompassing in particular the production, storage, offering for sale, marketing, import, export and transit as well as the possession for such purposes. Since July 2008, the rights holder may forbid the import, export and transit of commercially produced products in particular also if this is done for private purposes (Art. 8 and 9 of the Design Act).
The protection will exist for a term of 5 years from the date of filing. Thereafter the protection may be renewed by four further protective terms of 5 years each up to a maximum duration of 25 years (Art. 5 of the Design Act).