Get a head start in the market

By registering your design you will have sole right to the appearance of a product and to exploit it commercially. For a design to be protected by the Designs Act, the design must be registered with the Norwegian Industrial Property Office (NIPO). A design registration gives you tangible proof of your exclusive right. Should you end up in conflict, you will have a stronger case with a design registration.

Registering your trademark is important because it enables you to document your exclusive rights, and can:

• increase your competitive advantage and improve the possibility of earning money from your design
• help you achieve a greater market share
• gives you a sound basis for entering into sales and licensing agreements with others.
• make your business more attractive to partners and investors
• help to prevent conflicts
• be used as evidence in a conflict

If someone wishes to contest your right, they must disprove that you have exclusive rights to the design. The burden of proof is therefore placed on the other party.

The Copyright Act and the Marketing Act

The appearance of a product can also be protected by legislation other than the Design Act, namely the Copyright Act and the Marketing Act. In other words, you may have some protection for your product even though it is not registered under the Designs Act at the Norwegian Industrial Property Office (NIPO).

Protection under the Copyright Act requires that the design meets the so-called "threshold of originality". That is, the design must be the result of a distinct creative effort, so that it appears original. Copyright is created automatically as the work is brought into existence. It is not a right you can get through registration. It is therefore up to the courts to decide whether the appearance of a product meets the threshold of originality and thereby enjoys protection as intellectual property. Copyright grants an exclusive right to make copies of the work and to make it available to the public. Copyright is valid for the life of the creator and 70 years after the creator's death.

The Marketing Act does not grant exclusive rights as such, but prohibits actions that are contrary to good business practice. If you wish to use the Marketing Act  in a conflict with another party, you have to argue that they have copied your product. In addition, you must prove that the imitation has occurred in such a way that it must be considered an unreasonable exploitation of your efforts or results. In other words, the other party must have done something reprehensible. The Marketing Act does therefore not provide objective protection for the appearance of a product as such, but protects the efforts that have been made.

Should I protect my design through registration with the NIPO?

Do I need to register my design if it is already protected by the Copyright Act or the Marketing Act?

This is a question we often get at the NIPO. There are good reasons for registering your design, even though it may also be protected by other legislation.

Design registration provides a tangible proof of your rights, namely a documented exclusive right that shows the date when your design registration was filed at the NIPO. The images in the design registration also define the protection you receive. This is in contrast to copyright protection that cannot be registered and must therefore be determined by the courts.

A design registration is valid until someone challenges the right. If someone wants to contest your rights to the design, they must prove that you do not have an exclusive right to the design. In this way, the burden of proof is reversed. On the other hand, if you only claim copyright, you must prove that you have protection under the Copyright Act.

A documented design registration can:

• Make it easier for you to keep others at bay, because it can be more intimidating for those wishing to copy your design than if you claim copyright. The Copyright Act can provide adequate protection, but you must use the court system to determine the scope of protection. In many cases, you can succeed in stopping someone else's use of your design simply by documenting that you have an exclusive right through registration. This can save you having to go through with an expensive court case.
• Make it easier to get assistance from customs authorities in stopping pirate copies of your products.
• Give you more legs to stand on if you end up in a conflict. The Design Act, the Copyright Act and the Marketing Act have different conditions for obtaining protection. For example, not all forms of design that can be registered with the NIPO, will have a threshold of originality and thereby be protected under the Copyright Act. In Norway, for example, in the area of arts and crafts, and industrial design, there has traditionally been a relatively strict requirement of originality for obtaining protection under the Copyright Act.
• Make it easier to sell your exclusive right to the design, license it out, or enter into collaborative agreements with others, because this right provides security for those who want to invest in your business. Protection under the Copyright Act and the Marketing Act is more uncertain, in the sense that you do not have a registered or documented right and must use the courts to determine the scope of protection.