It is advisable to check first whether or not there is novelty and art in the design, to see if copyright protection would be sufficient or whether a shape or design mark registration should be taken out. We find that most design registrations serve no useful purpose.
Without prejudice to the copyright, a design registration confers a legal monopoly on the owner of a valid registration. The protection is granted for the design as published. It is therefore important to retain the original publication in the Design Journal with the certificate of registration and to see to it that the publication sufficiently and clearly shows the design (additional representations showing the design in various positions are permitted) and, if need be, to add a description to the registration.
The representations should show the design in its industrial application. The Mona Lisa design for toilet soap, for instance, should show a cake of soap embossed with the Mona Lisa, not just the representation of the smiling young lady; Mickey Mouse curtains can only be protected as a design if the representations clearly show a curtain printed with Mickey Mouse. For this reason it is not possible to register all goods in a particular class en bloc; representations are required of all goods in that class bearing or showing the design.
It is possible to combine up to 50 objects in one registration - even if they have no relation whatsoever - thus saving considerable expense. These can be individually assigned and renewed.
If the artist consents to design registration, in the absence of stipulation to the contrary, he automatically assigns his copyright in as much as embodied in the design. It is advisable to arrange for integral assignment of the total copyright. Copyright and design right can co-exist but the copyright may end when the design right lapses unless a special preservation declaration is filed with the Benelux Office for Intellectual Property during the last year of the registration or within three months after cancellation following a Court Order.
Duration is for 5 years from the date of application. During the last 6 months renewal can be requested for a new 5 year period; however the maximum life span is 25 years.
Recordal of licence is provided for, but its only advantage is that the licensee can join with the licensor in proceedings for damages.
Use is not required to maintain title to a design. For this reason, a design registration is sometimes preferable to a Trade Mark registration.
Involuntary cancellation is only possible on the basis of a Court Order. The true owner may claim ownership of a design during 5 years from the date of publication thereof.
Assignment can only be effected in writing and must cover the entire Benelux territory, being effective against third parties only after recordal.
Registration may be kept secret for up to 12 months.
As long as the registration is secret, no damages can be recovered, this being possible only after publication.