The Benelux model

1. Introduction and legal framework

The Benelux model provides strong legal protection for the external appearance of products within the Benelux countries (Belgium, the Netherlands and Luxembourg). This protection is regulated in the Benelux Convention on Intellectual Property (BTIP)., which went into effect on Sept. 1, 2006, and has been amended several times since then.

The regulation of the Benelux model was strongly influenced by the European Directive 98/71/EC on the legal protection of designs (the "Designs Directive"), which provides a harmonized approach to national design protection within the European Union. As a result, the Benelux model and the Union model (formerly: Community model) many similarities, but there are nevertheless important differences in procedure, scope of protection and enforcement.

For companies seeking to protect their design, the Benelux design offers an essential tool to valorize their creative efforts and protect them from counterfeiting and infringement. Unlike copyright, which arises automatically upon creation, the right to a Benelux design arises solely through registration.

2. What is a Benelux model?

2.1 Legal definition and interpretation

According to article 3.1(2) BTIP, a drawing or design is considered to be "The appearance of a product or part thereof." So this refers to the visually perceptible design of a product or part of it.

This "appearance" is further specified in Article 3.1(3) BTIP as derived from the characteristics of notably:

• The lines (in a mathematical sense, not as contours or outlines)
• The circumference (indicating the three-dimensional aspect)
• The colors (never a model in itself, but an important element of a drawing)
• The shape (also a three-dimensional aspect)
• The texture (visually perceptible surface properties, e.g., a rough fabric)
• The materials of the product itself (visually observable properties, e.g., a specific grained wood species)
• Its decoration (apart from its shape)

Importantly, this list is not exhaustive. Other visual elements may also be part of the protected design.

2.2 Two-dimensional and three-dimensional aspects

The "appearance" of a product can have different dimensions:

Two-dimensional (drawing): This refers to the decoration of a surface, such as patterns, design, prints, graphics or surface treatment. Often these are not inseparable from the product on which they are located, so they can easily be applied to different objects.

Three-dimensional (model): This refers to the design of the product itself, where the function of the product usually influences the form chosen. Examples include the shape of a chair, a lamp, a package or a car grill.

Combination: Many objects combine both two- and three-dimensional aspects in their appearance, such as a bottle with a specific shape AND a printed label.

2.3 The concept of "product"

Article 3.1(4) BTIP defines a "product" as "any object manufactured by industrial or artisanal means." This includes:

1. Components for composite products: For example, bumpers for cars, lampshades, kitchen accessories
2. Packaging: Bottle molds, boxes, cases, display packaging
3. Implementation: The external appearance of products.
4. Graphic symbols: Logos, icons, figurative marks
5. Typographic fonts: Specific designs of letters and numbers

However, computer programs are expressly excluded from protection as designs.

An important aspect is that the concept of "product of production" is not limited to physical units. Thus, the furnishing of a hotel room, restaurant or kitchen can also be considered a product, provided that they are aesthetically matched, functionally related and usually marketed as one product (cf. General Court EU June 13, 2017, case T-9/15, Ball Beverage Packaging Europe/EUIPO).

2.4 Parts and components of products.

Design right may cover:

• The entire productions
• Part of a product
• A component of a compound product

Part of a product: Anything that is less than the whole, without that part being separable as an independent unit from the product of which it is a part (for example, the back of a chair).

Part of a composite product: A component that is intended to be integrated into a complex product and can be replaced so that the product can be disassembled and reassembled (for example, a car door).

3. Protection conditions

3.1 Novelty - Article 3.3(1) BTIP

A design is considered new if no identical design has been made available to the public before the date of filing or priority. Novelty is judged objectively: even a designer who completely independently designs a drawing or design that happens to be identical to an already existing design cannot claim protection.

Identity and unimportant details: Drawings or models are considered identical when:

• They are actually identical
• Characteristics differ only in insignificant details that are not immediately observable

The assessment of novelty requires a comparison between the design for which protection is sought and other individual designs already known. This comparison must relate to the drawing or design as a whole, not to individual features.

Importantly, the assessment of novelty should include designs applied to other products. The Court of Justice confirmed this in its judgment of September 21, 2017 (gev. cases C-361/15P and C-405/15P, Easy Sanitary Solutions v. EUIPO): a design cannot be considered new if an identical design has already been made available to the public, even if this older design has been incorporated into or applied to another product.

3.2 Proprietary character - Article 3.3(2) BTIP

A drawing or model possesses individual character if the general impression it creates on the informed user differs from the general impression created on that user by previous drawings or models.

The informed user: This is a fictional person located between:

• The average consumer (who has little specific knowledge)
• The professional with in-depth technical expertise

The Court of Justice, in its judgment of October 20, 2011 (Case C-281/10, Pepsico v. Grupo Promer Mon Graphic) clarifies that the informed user:

• Not just average, but highly attentive
• Has knowledge of the various models in the relevant industry
• Possess a certain knowledge of the elements contained in these models
• Has a relatively high level of attention when using the products

Degree of freedom of the designer: The assessment of individual character should take into account:

• Technical constraints affecting the designer's freedom
• Legal requirements applicable to the product
• Standardization of certain characteristics

The more limited the designer's freedom, the more likely small differences will suffice to create a different overall impression. Conversely, with great creative freedom, larger differences will be necessary to create a different overall impression.

Comparison with individual models: The Court of Justice has confirmed (Case C-345/13, Karen Millen Fashion/Dunnes Stores) that the comparison should be with individual models, not a combination of characteristics of different models.

Four-stage test: According to established case law of the EU General Court, the assessment of individual character consists of four stages:

1. Determine to which sector the produce belongs
2. Determine who the informed user is, what their knowledge is and their attention level
3. Exploring what degree of freedom the designer had
4. Comparison of the overall impressions produced by the models, taking into account the first three factors

3.3 Interrelationship between novelty and individual character

The EU General Court, in a judgment of June 6, 2013 (Case T-68/11, Erich Kastenholz v. OHIM) stated that the conditions of novelty and own character overlap to some extent. Differences sufficient to conclude that models are not identical (novelty) do not automatically suffice to create a different overall impression (own character).

So there is a hierarchy: inherent character is a more stringent requirement than novelty. A model that possesses inherent character will automatically be new, but not vice versa.

3.4 Availability to the public

For the assessment of novelty and individual character, it is crucial when a drawing or design has been "made available to the public." According to Article 3.3(3) BTIP, a drawing or design is deemed to have been made available to the public when it:

• Was published after registration
• Otherwise, published
• Has been exhibited
• Marketed
• Otherwise disclosed (e.g., orally)

Exception: These disclosures will not be considered if they are "in the ordinary course of business could not reasonably have come to the knowledge of EU or EEA insiders in the relevant industry.“

This exception must be interpreted restrictively. The Court of Justice clarified in the September 21, 2017 (Easy Sanitary Solutions) judgment that this exception is not intended to distinguish between different industries in the EU, but aims to avoid qualifying facts that are difficult to verify in third states as disclosures.

3.5 Term of grace

Art. 3.3(4) BTIP provides an important exception: a "grace period." As a result, a disclosure is not included in the assessment of novelty and individual character if it:

1. Has been made by the designer or his assignee within twelve months prior to the filing or priority date
2. The consequence is abuse against the designer within that same period

This deadline allows designers to test their creation in practice before applying for formal protection.

4. Excluded from protection

4.1 Technically determined characteristics (Article 3.2(1)(a) BTIP)

External features of a product which are determined solely by its technical function are not eligible for protection. The rationale behind this is that technological innovation should not be hampered by design rights.

In the March 8, 2018 judgment (Case C-395/16, Doceram v. Ceramtec) clarifies how this exclusion should be interpreted:

1. The exclusion applies when "the need to satisfy a particular technical function of the product in question is the sole factor why the designer chose a particular external characteristic."
2. The existence of alternative designs (that perform the same function) is not decisive
3. It should be considered whether the technical function was the only factor determining the characteristics, with other considerations (especially the visual aspect) not playing a role

For this assessment, the court may consider:

• The model at issue
• The objective characteristics of the product in question
• Data on the use of the product
• Possible alternative designs

4.2 Liaison models (Article 3.2(1)(b) BTIP)

This exclusion concerns so-called "must fit" elements: external features that must necessarily be reproduced in exactly the same shape and dimensions to allow mechanical connection.

Examples include the shape of a plug that fits into an outlet, or a coupling that allows a vacuum cleaner hose to fit on a vacuum cleaner.

The rationale behind this exclusion is to promote interoperability between products from different manufacturers and encourage standardization.

Important nuance: This exclusion does not apply:

• If the very purpose of the design is to permit the multiple assembly or connection of mutually interchangeable products (Article 3.2(2) BTIP)
• If interoperability can be achieved by alternative means
• If the connection is not necessary for each of the two products to perform their function

4.3 Conflict with public order or morality

Drawings or designs that are contrary to public order or morality of any of the Benelux countries are excluded from protection.

Examples include:

• Drawings and models in the sexual sphere considered offensive
• Racist drawings and models
• Drawings and models in which Nazi symbols are used
• Models for torture devices or land mines

5. Registration procedure

5.1 The Benelux Depot

Unlike copyright, the right to a drawing or design arises exclusively through registration. Article 3.5(1) BTIP provides that the exclusive right to a design is acquired only by:

• A Benelux filing made with the BOIP
• Made an international filing at the International Bureau in Geneva

Competent authorities for Benelux deposit:

• The Benelux Office for Intellectual Property. (BOIP) in The Hague
• The national industrial property offices in Brussels or Luxembourg (for Belgium this is the Intellectual Property Office (DIE).)

5.2 Deposit formalities

When making a filing, various formalities must be fulfilled (Article 3.9 BTIP):

• Completing the official application form
• Provide a clear image of the drawing or model
• Payment of fees due
• Indication of the product in which the design is incorporated
• If desired, a description of the characteristic features
• Any mention of the designer or that the designer has waived the right to be mentioned

Single or multiple deposit:

• Single deposit: For one drawing or model
• Multiple depot: For multiple drawings or models in one repository

Additional conditions apply to multiple filings:

• All products must belong to the same (sub)class of the international classification
• The number of models in one depot is limited to 50

Classes are defined in the Agreement of Locarno establishing an international classification for industrial designs.

5.3 Procedure after submission

Upon receipt of the deposit, it is verified that all formal requirements have been met. If they are, a deed of deposit will be made indicating the filing date.

The BOIP conducts no substantive examination out to:

• Novelty
• Own character
• Other material conditions of protection

There is only one exception: BOIP can refuse publication if the design is contrary to public order or morality of one of the Benelux countries.

All deeds of deposit are centralized at BOIP in The Hague, which promptly enters the deposits in the register and then publishes them.

5.4 Suspension of publication

The depositor may request that publication be suspended for up to twelve months from the date of filing or priority (Article 3.12 BTIP).

This opportunity offers significant strategic advantages:

• Competitors do not learn about the new model until later
• In the meantime, the designer can prepare for the market launch
• It creates a period of secrecy while already setting a filing date

5.5 International depots

In addition to the Benelux deposit, a design can also be deposited through international means pursuant to the Settlement of the Hague (Article 3.15 BTIP).

International filing is done at the International Bureau in Geneva (WIPO).. When filing internationally, the depositor designates the countries where he seeks protection, which may include Benelux.

Benefits of international filing:

• Single procedure for protection in multiple countries
• Cost savings over national depots in each individual country
• Central management of the model portfolio

5.6 Right of priority

A depositor who has previously made a deposit in a country party to the Paris Union Treaty whether it TRIPS Convention, may invoke the right of priority within six months (Article 3.3(5) BTIP).

This means that the date of the earlier filing applies as the date for assessing novelty and individual character. Events between the priority date and the Benelux filing date are disregarded.

To invoke the right of priority, this must:

• Are listed at the time of filing, or
• By special affidavit filed with the BOIP within one month of filing

6. Rights holders

6.1 Who is entitled to a drawing or design?

In principle, the right to a drawing or design belongs to the actual designer or his legal successors (Article 3.7 BTIP).

The actual designer shall be considered to be the person who by his efforts brought the drawing or model into existence (confirmed by the Benelux Court of Justice in the judgment of June 22, 2007).

6.2 Employees and principals

The BTIP contains specific provisions for designs designed in service or commissioned:

Employees (Article 3.8(1) BTIP):

• If a drawing or model is designed by an employee in the performance of his job, the employer shall be considered the designer
• This applies unless otherwise stipulated
• The term "in the performance of his duties" is to be interpreted restrictively and requires a clear connection between the design and the employee's function

Principals (Article 3.8(2) BTIP):

• If a drawing or model is designed to order, the person who placed the order is considered the designer
• This only applies if the order is made with a view to use in commerce or industry of the product in which the drawing or design is embodied
• Again, unless otherwise stipulated

According to the Dutch Supreme Court (ruling of October 25, 2013), the application of Article 3.8 BTIP does not require that a drawing or design meet the conditions for protection. It is sufficient that there is a design within the meaning of design law.

6.3 Claim to requisition

If a design is deposited without the permission of the right holder, the designer (or the person who is considered a designer according to Article 3.8 BTIP) can claim the deposit (Article 3.7 BTIP).

The claim for requisition must be filed:

• Within a period of five years from the publication of the registration
• In court (not the BOIP).

After registration of the claim, if the court grants the claim, the plaintiff may be substituted for the original depositor.

After the expiration of the five-year period, the right holder can only invoke the nullity of the deposit, with no registration possible in his name.

7. Rights granted

7.1 Content of the exclusive right

Design right confers an exclusive right that has both a positive and negative component:

• Positive: the right to use the drawing or model
• Negative: the right to oppose use by third parties

According to Article 3.16(1) BTIP, the holder of a drawing or design may oppose the use of a product in which the drawing or design has been incorporated or to which it has been applied and that:

• Exhibits the same appearance as the registered drawing or design, or
• Does not create a different overall impression with the informed user

7.2 Operations of use

Article 3.16(2) BTIP exemplarily lists the acts against which the design holder can take action:

• Manufacturing
• Offering
• Marketing
• Selling
• Delivering
• Leasing
• Entering
• Performing
• Exhibiting
• Using
• Stocking for any of these purposes

The enumeration is not exhaustive, as evidenced by the wording "in particular."

7.3 Scope of protection

An important aspect of design law is that protection is not limited to the specific product for which the design is registered. The Court of Justice confirmed this in its judgment of September 21, 2017 (Easy Sanitary Solutions):

• Protection extends to all types of products
• Protection is not limited to the product category specified in the application

Specifically, this means that a design filed for a car, for example, also protects against application of the same appearance to a toy car or a bed, as long as it does not create a different general impression on the informed user.

The Dutch Supreme Court, in a judgment dated May 31, 2013 (Apple/Samsung) clarifies that there is a relationship between the validity of a design and its scope of protection:

• The scope of protection depends on the distance between the model and previous models
• The scope of protection relative to later models does not exceed this distance

In other words, the more innovative the model, the broader the scope of protection.

7.4 Concurrence with other causes of action

Article 3.16(1) BTIP expressly states that the design right applies "without prejudice to the application of the common law concerning tort liability."

This means that, in addition to a claim for design infringement, the design owner may also rely on:

• The rules on unfair trading practices
• The general principles of tort law
• Other intellectual property rights (trademark law, copyright)

8. Restrictions on rights granted.

8.1 General restrictions (Article 3.19(1) BTIP)

The exclusive right to a drawing or design does not include the right to oppose:

(a) Acts in the private sphere for non-commercial purposes

• This refers to private, non-profit use
• Example: copying a protected piece of furniture for one's own domestic use

(b) Acts for experimental purposes

• This includes scientific research, whether conducted for private or commercial purposes
• The experiments need not necessarily involve the model itself

(c) Reproduction for illustration or teaching purposes

• This is subject to three cumulative conditions:
  1. Operations must be compatible with fair trade practices
  2. They must not detract from normal operations without necessity
  3. The source must be cited

The Court of Justice, in a judgment of September 27, 2017 (Nintendo/BigBen) clarifies that this restriction applies in a commercial context and aims to allow images that serve as the basis for explanations or comments.

8.2 Transport-related restrictions (Article 3.19(2) BTIP)

The design right does not apply to:

• The equipment of vessels and aircraft registered in another country that are temporarily in the Benelux area
• Imports of replacement parts for these vessels and aircraft
• Repairs to these vessels and aircraft

8.3 Community exhaustion (Article 3.19(4) BTIP)

The exclusive right does not imply the right to oppose acts relating to products put into circulation in the EU or EEA by the holder or with his consent.

This rule prevents the design holder from controlling the further marketing of products after he himself has placed them on the market.

8.4 Right of prior use (Article 3.20 BTIP)

A third party filing before the filing date or priority date:

• Manufactured proceeds with the same appearance or that do not create a different overall impression, or
• Initiated the implementation of this intention

can continue these activities despite the subsequent design right. This right of prior use is a personal right that can only pass along with the business in which the acts took place.

The right of prior use includes all actions mentioned in article 3.16 BTIP, with the exception of importation.

8.5 The repair clause (Article 3.19(3) BTIP)

This important limitation concerns repair parts. The exclusive right to a drawing or design which forms a part of a complex product does not include the right to oppose the use of the design for repair of this complex product with the intention of restoring its original appearance.

In its judgment of December 20, 2017 (Acacia/Porsche) clarifies the conditions of application:

1. There must be a component of a complex product
2. The model should be used for repair of the composite product
3. The goal should be to restore the composite product to its original external characteristics

The manufacturer or seller of repair parts must:

• Inform the downstream user that the part is for repair only
• Ensuring that the part is not used for other purposes
• Do not sell parts if he knows they will not be used for repair

This repair clause applies only to drawings and models filed after December 1, 2003.

9. Protection period and renewal

9.1 Initial and maximum duration of protection

According to Article 3.14(1) BTIP, after registration, a design is protected for a period of five years from the filing date.

This period of protection can be extended by four consecutive five-year periods, up to a maximum period of protection of 25 years from the filing date (Article 3.14(2) BTIP).

9.2 Procedure for renewal

Renewal is made by payment of the fee due to the BOIP. This payment may be made:

• Within twelve months prior to expiration
• Within six months of expiration, subject to payment of an additional fee (grace period)

In a multiple deposit, renewal may be limited to a subset of drawings or models.

BOIP reminds the holder of the drawing or design of the possibility of renewal six months before expiration. However, this reminder is a service; not receiving it cannot be invoked as an excuse for non-renewal (Article 3.14(6) BTIP).

10. Relationship to other intellectual property rights.

10.1 Cumulation with copyright

Article 17 of the Model Directive requires Member States to allow for the possibility of cumulative protection by design law and the copyright. In the Benelux, this cumulation is therefore possible: a design can be protected by both regimes at the same time, provided the respective conditions are met.

The BTIP contains specific provisions in Article 3.28 to ensure that both rights remain in the same hands:

1. The authorization for a deposit granted by the designer constitutes transfer of copyright (Article 3.28(1) BTIP)
2. The depositor is presumed also to be the copyright holder, but this does not apply against the true designer (Article 3.28(2) BTIP)
3. Transfer of copyright also implies transfer of design right and vice versa (Article 3.28(3) BTIP)

For employees and contractors, Article 3.29 BTIP provides that copyright, like design rights, belongs to the employer and client respectively, unless otherwise stipulated.

10.2 Relationship to trademark law

A drawing or model can also trademark protection enjoy if it has distinctive character and meets the other trademark requirements.

In practice, this can lead to:

• A longer duration of protection (potentially unlimited with trademarks)
• Protection against use for dissimilar goods or services (in the case of well-known marks)
• Different infringement test (confusion in marks versus general impression in models)

10.3 Relationship to patent law

Technical aspects of a product may not be protected by design law, but may be protected by patents or utility models. The Designs Directive, in Article 16, explicitly leaves open the possibility of cumulation with these forms of protection.

11. Nullity and lapse

11.1 Expiration (article 3.22 BTIP)

The design right expires by operation of law by:

• Voluntary de-registration
• Expiration
• Waiver of rights (in international filings)
• Ex officio deletion of international deposit

Removal of a Benelux deposit at the request of the holder is subject to restrictions (Article 3.21 BTIP):

• Not possible if there are third party rights established by contract or prosecuted in court
• A license requires joint request by design holder and licensee
• The deletion applies to the entire Benelux area

11.2 Grounds for nullity (articles 3.6 and 3.23 BTIP)

The invalidity of a design right can be invoked on several grounds:

1. Conflict with a prior right (Article 3.6 BTIP):

• Conflict with an older design made available to the public after the filing or priority date
• Use of an earlier mark without permission
• Use of a copyrighted work without permission
• Improper use of items listed in Article 6ter of the Paris Union Convention

2. Failure to comply with legal requirements (article 3.23 BTIP):

• Not a drawing or design within the meaning of article 3.1 of the BTIP
• Failure to meet the requirements of novelty and individual character
• Fall under the exclusions of article 3.2 BTIP
• Conflict with public order or morality
• Insufficient evidence of the characteristic features from the deposit

3. Deposit without permission (article 3.7 BTIP):

• Deposit made by someone who is not the designer or is not considered as such according to article 3.8 BTIP

11.3 Competent authorities and legitimacy

The power to invoke nullity varies by ground of nullity:

• Any interested party: for most nullity grounds
• Specific rights holders: for conflict with older rights
• Public prosecution: for conflict with public order or morality

If the proceedings are brought by the public prosecutor, only the courts in Brussels, The Hague or Luxembourg have jurisdiction (Article 3.23(7) BTIP).

11.4 Nullity after expiration

Article 3.23(6) BTIP provides that the invalidity of a registration can also be invoked after lapse or surrender. This may be of interest to third parties who have been sued by the design holder for infringement while the design has subsequently lapsed.

11.5 Enforcement in modified form (Article 3.24(2) BTIP)

In certain cases, a design that could be declared invalid may be maintained in modified form if it:

• In that form meets the protection requirements
• His identity retains

This option is particularly important in cases of partial nullity, such as when only certain elements conflict with an older right.

12. Transfers and licenses

12.1 Assignment (article 3.25 BTIP)

A design right may be transferred independently of the company's trading fund. The validity of a transfer among living persons requires a written deed.

The transfer must cover the entire Benelux territory; partial territorial transfers are void.

12.2 Licenses (article 3.26 BTIP)

A design right can also be licensed, with no written form required (although this is strongly recommended). A license may cover part of the Benelux territory.

A special feature of design law is that the design owner can invoke his design right against a licensee who acts in violation of provisions on:

• The duration of the license
• The form in which the model may be used
• The products for which the license is granted
• The quality of the products put into circulation

This gives the design holder a stronger means of control than an ordinary contractual claim.

12.3 Objection to third parties (article 3.27 BTIP)

A transfer or license is effective against third parties only after an extract of the deed has been entered in the register. Until then, the legal act can be valid between parties, but cannot be invoked against third parties.

13. Our specialization and services

Our law firm has extensive expertise in drawing and design law and can assist you in all aspects of it:

13.1 Strategic advice

• Evaluating the protectability of your creation
• Advice on the most appropriate protection strategy (Benelux, EU or international)
• Trade-off between different forms of protection (design, trademark, copyright)
• Portfolio development and management

13.2 Registration and management

• Preparation and submission of Benelux deposits
• Assistance with international filings
• Managing your model portfolio
• Renewal of tenders

13.3 Contracts and transactions

• Drafting and reviewing license agreements
• Guidance on transfers of design rights
• Due diligence in acquisitions
• Cooperation agreements and joint ventures

13.4 Enforcement and litigation

• Breach analysis
• Negotiations with infringers
• Judicial proceedings
• Seizure regarding counterfeiting
• Customs measures
• Defense against nullity actions

13.5 Industry-specific expertise

Our attorneys have specific expertise in industries where design protection is critical, including:

• Fashion and textiles
• Furniture and interior design
• Automotive
• Packaging
• Graphic design
• Consumer Electronics

14. Conclusion

The Benelux model offers a powerful tool to protect your design from counterfeiting and unauthorized reproduction. The relatively simple registration procedure, combined with a potentially long protection period of 25 years, makes this an attractive option for designers and companies investing in design.

Given the complexity of design law and the strategic choices to be made, professional legal advice is crucial. Our law firm is ready to guide you through this and represent your interests.