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1 March 2011

New Beetle not new enough? Three tips to protect facelifted product designs

Volkswagen have been denied protection in Europe for a facelifted version of their iconic "New Beetle" car design. In this article we review the decision and suggest some strategies for protecting successive generations of a product design.

The decision, which is only currently available in German and is subject to appeal, does not suggest any inherent reason why such car designs are not registrable - indeed, as a general rule the new shape of any product which differs significantly from what has gone before is registrable in Europe. When a design as iconic as the New Beetle is first launched, it can and should be registered to obtain exclusive rights.

The design registration for the New Beetle failed because Volkswagen's application in 2003 was intended to cover a facelifted version of the New Beetle, but the original concept car had been shown at various motor shows in the 1990s, and indeed a first generation of the New Beetle was already on the market at the time VW applied to register the facelifted design in 2003.

The photo comparison (above) shows the front, side and rear views of the "prior art", i.e. two earlier iterations of the New Beetle design, alongside the corresponding views from the 2003 design registration. The Invalidity Division of OHIM (the Community Designs Office) held that while the 2003 design was not identical to the earlier versions, the differences were not sufficient to make a different overall "visual impression" on the informed user, which is the test for non-identical designs.

Volkswagen had pointed out various differences such as the shape of the headlights, side skirts, wheel arches, and of the cut-outs in the lower front spoiler. It was held that those differences could not outweigh the very many visual similarities with the designs exhibited in 1994 and 1996. Unfortunately for Volkswagen, pan-European protection for designs only came into existence in 2003.

There are three tips for those designing new products, considered from the point of view of protection in Europe.

1. Know the implications of exhibiting
Be aware that exhibiting, selling or publishing a new product design, even in a prototype or pre-production version, can invalidate subsequent applications to protect the appearance of the final design or of later generations of the product if they have enough visual similarities. Even after exhibiting you may be able to avail of a grace period for one year.

2. Protect each major revision
To maximise protection for the design, consider filing for registered design protection at the outset, i.e. before the first generation or prototype is publicised, and again for each significant development of the design.

3. Identify and protect the facelifted elements
If your facelifted product contains some general similarities with an earlier version, the design registration system in Europe allows you to obtain protection for the design of part of the product only. Therefore, you can file for protection for one or more visible components of the product, or you can highlight in your application those aspects which are considered to be most different.

David Brophy
FRKelly