10.08 Design

10 Intellectual Property Law

Designs of products or parts of products which are characterised in particular by the arrangement of lines, surfaces, contours or colours or by the material used may be protected as designs.

Legal basis

The legal basis for design protection in Switzerland is the Federal Act on the Protection of Designs (Designs Act, DesA, SR 232.12) and the related Ordinance on the Protection of Designs (Designs Ordinance, DesO, SR 232.121).

Conditions for protection

Designs of products or parts of products which are characterised by the arrangement of lines, surfaces, contours or colours or by the material used can be protected as designs (DesA 1). This design must be new and have individual character (DesA 2).

A design is new within the meaning of the law if no identical design which could have been known to the relevant public in Switzerland has been made available to the public before the date of filing or priority date. The general public is not necessarily to be regarded as the «relevant public». In a dispute concerning the design of a perfume bottle, the «relevant public» for the Court were designers dealing with the design of perfume bottles. According to the Court, they must also be aware of a French reference book in which a previous, similar design of a perfume bottle was illustrated, even if that book was not available in Switzerland, i.e. it had to be ordered in France. One of the consequences of this condition of protection is that designers should avoid publishing a design before it is deposited, e.g. on a website. This, even if according to DesA 3 the disclosure of a design cannot be held against the holder of the corresponding right for a period of twelve months prior to the date of deposit or priority date, if third parties have improperly disclosed the design to the detriment of the entitled person or the entitled person has disclosed the design him-/herself («harmless disclosure»).

Individuality as a condition for protection of a design is a low level of originality; in contrast to copyright law, which requires a high level of originality. Individual in the sense of the law is a design if it differs from previous designs, but in essential features.

Design protection is excluded in particular if the features of the design are exclusively dictated by the technical function of the product, if the design infringes federal law or international treaties or if the design is contrary to public order or morality (DesA 4).

Design research

In order to avoid legal disputes as far as possible, a design should definitely be researched before it is deposited. In doing so, one must be aware of the territoriality of a design. Just as a design must be filed in every country for which design protection is claimed (s. below), a design must also be researched in every corresponding country. In addition, there are also regional designs, such as the design of the European Union («EU design»), which can also be searched on a separate platform. Finally, it is important to know that there are international designs that are filed with the WIPO under the so-called «Hague Agreement» (s. below) and entered a corresponding international register, but – and this is important! – often do not appear in the national registers (e.g. the Swiss) for whose countries they claim protection. In practice, this means that in addition to the national register (e.g. the Swiss), one must always search the register of the «Hague Agreement» or the WIPO. Below are some direct links to important national and international design registers (from a Swiss perspective):

Costs of a design registration

The Swiss Design Office IPI publishes the fees for the deposit of a Swiss design under the following link: https://www.ige.ch/en/protecting-your-ip/designs/swiss-applications/schedule-of-fees.html. The fees for the registration of an international design through the Hague System can be calculated with the WIPO fee calculator: https://www.wipo.int/hague/en/fees/calculator.jsp.

Design deposit – design registration

Designs with protective effect for Switzerland can be deposited either with the Swiss Design Office IPI (national filing) or, via the Hague System, with the World Intellectual Property Organization (WIPO) (international filing). The latter is even possible directly, i.e. without prior registration of a basic design in Switzerland.

National filing

In contrast to a trademark, a design cannot be deposited with the Swiss Design Office IPI on an appropriate platform. You have to download a form from the IPI’s homepage, fill it in and then submit it to the IPI by e-mail. The details can be found under the following link: https://www.ige.ch/en/protecting-your-ip/designs/swiss-applications/submitting-your-application.html. Subsequently, the IPI examines whether the design applied for is actually a design pursuant to DesA 1 (formal examination; DesO 15) and whether the design violates federal or state treaty law or public order or morality (substantive examination; DesO 16 in conjunction with DesA 4 d and e). On the other hand, the IPI does not examine whether the design applied for is new and individual (s. above). It is therefore all the more important to conduct your own research (s. above).

International filing

If you want to deposit a design not only in Switzerland but also in other countries, you must do so directly at WIPO under the Hague System. Instead of first filing in Switzerland for Switzerland, you can also do this directly, i.e. without a Swiss basic design, at WIPO. Detailed information is available at WIPO under the following link: https://www.wipo.int/hague/en/how_to/file/file.html. You can register a design with WIPO either via the eHague portal or by filling out a form. To register via the e-platform, you must first register with WIPO. WIPO only carries out a formal but not a substantive examination of the design (s. above). Here, too, it is therefore important to carry out your own research (s. above).

In contrast to the trademark, there is no possibility of opposition by owners of earlier designs.

Publication of registered designs

Registered designs protected in Switzerland are published with legal effect on the online database of the IPI swissreg.ch. (for research s. above!)

Term of protection

In Switzerland, a registered design gets a maximum protection of 25 years. On registration, protection is granted for 5 years. This can then be extended four times (DesA 5).

Example of a design registered by On AG or its subsidiary On Clouds GmbH for a sports shoe: CH 141942 shoes

10 Intellectual Property Law