Before registering a design, conducting a comprehensive professional search is crucial to mitigate legal risks, ensure protection, and maximize enforceability. This process involves identifying prior designs, assessing potential conflicts, and ensuring the design meets legal requirements for protection.

1. Importance of a Professional Design Search

• Avoiding Infringement Risks: A search helps to identify earlier registered designs or unregistered design rights that may conflict with the new design. Infringement can lead to costly litigation, invalidation, or licensing obligations.
• Ensuring Novelty and Individual Character: According to Article 4 and 6 of the Community Design Regulation (CDR), a design must be new and have individual character. A search assesses whether the design meets these criteria.
• Increasing the Likelihood of Registration and Enforcement: If an examiner or a competitor challenges the design’s validity, a prior search helps anticipate objections and counterclaims.
• Strategic Filing Decisions: A search can help decide where to register (e.g., EUIPO, national offices, WIPO Hague System) and whether modifications are necessary before filing.

2. How a Professional Design Search Works

1. Database Search
   • We use official databases such as EUIPO (eSearch), WIPO (Global Design Database), DPMAregister, USPTO Design Search Code Manual, and commercial tools (e.g., DesignView, LexisNexis, Derwent Innovation).
   • Example: If a company wants to register a chair design, a search would reveal prior designs in the same Locarno Class (e.g., Class 06-01 for chairs).
2. Examination of Similarity and Legal Risks
   • We analyze whether the design is identical or sufficiently similar to prior designs, considering overall impression from an informed user’s perspective (ECJ C-345/13, Karen Millen v. Dunnes Stores).
   • Example: In PepsiCo v. Grupo Promer (C-281/10), the General Court ruled that minor differences in promotional designs were insufficient to establish novelty, emphasizing that the overall impression matters.
3. Market & Industry Analysis
   • We assess whether unregistered designs exist in the marketplace that could challenge enforceability (e.g., in fashion and consumer goods).
   • Example: UK Unregistered Design Rights (Lucasfilm v. Ainsworth [2011] UKSC 39) demonstrated how unregistered rights can still be enforced against infringers.
4. Risk Assessment & Strategy Development
   • We advise on potential redesigns or additional protections (e.g., copyright, trade dress).
   • If conflicts arise, we suggest preemptive actions, such as licensing, co-existence agreements, or modifications before registration.

3. Role of Design Lawyers in the Process

• Legal Risk Assessment: We evaluate the probability of opposition or invalidity claims.
• Advising on Scope of Protection: We help define the optimal protection strategy (single vs. multiple applications, RCD vs. national registrations).
• Defending Against Third-Party Objections: If a third party challenges the design, we handle oppositions, invalidity proceedings, and litigation.
• Drafting Precise Design Applications: We ensure that the visual representations comply with formal requirements (e.g., EUIPO’s strict image submission rules).

Conclusion

A professional design search is indispensable for minimizing infringement risks, ensuring a design’s novelty and enforceability, and developing a robust registration strategy. Without it, businesses risk wasted resources, legal disputes, and the invalidation of their rights.